I wanted to highlight two key points about Google's loss in a French court case over ads linked to trademarked terms that were in the now available French translation of part of the case and the write-up by Out-Law.com. The ruling does not completely forbid bidding on trademark terms and it highlights how bidding suggestion tools can make search engines more liable in such cases.
First, it's important to note that the ruling is more restrictive than might seem at first glance. The case against Google was brought by Le Meridien Hotels, which objected to Google having ads that would appear in response to its name and apparently its name in combination with other words.
The ruling doesn't forbids all ads from coming up for "meridien" or "le meridien," which is reasonable. The Out-Law article points out those words are also generic, meaning "meridian" in English, plus used by other companies.
Instead, the ruling forbids the purchase of ads linked to those terms or the terms in combination with others when they link to services identical or similar to what Le Meridien offers -- lodging.
So -- in the hotel business? Bid on those terms in France, and you might be in trouble. In some other business and want to link to those terms? That seems open.
The second key point is that the ruling specifically calls out Google's culpability in causing advertisers to bid on the terms in question. That's because Google's keyword suggestion tool will prompt advertisers to consider bidding on terms that have a trademark sense.
Specifically, in a search for related terms on "hotel" in the language of French that I checked today, Google comes back with suggestions like:
- hotel ibis
- hotel mercure
- hotel formule1
- hotel amsterdam
- formule 1 hotel
- ibis hotel
- hotel barcelone
- hotel meridien
- hotel lyon
That's listing only a few. Google does have a legal disclaimer at the top of the page:
Keep in mind that you are responsible for the keywords you select and their appropriate and legal use (i.e. you and you alone are responsible to make sure that your use of the keywords does not violate any applicable law
But advertisers might blow past that, select terms that (at least in France, for the moment), would be considered trademarks of others when used in relation to search ads and possibly get into trouble.
Certainly Google itself can't pass the blame on to the advertiser -- at least in France. Providing those suggestions is seen as Google having an active role in the process.
The Out-Law article suggest that Google is also being ordered to somehow remove trademarked terms from even being suggested. If so, that's an impossible task. The ruling itself points out that there are instances when ads might not be infringing on a trademark, depending on the exact services involved. How does Google or anyone automatically know this?
Assume you could hit a master database of all registered French trademarks (in the US, not all trademarks are registered -- in France, the same might be true).
Fair to say somewhere in Paris there's a hotel called "Paris Hotel." That's also a generic search. If someone wants to bid on the phrase "paris hotel," does that get trumped by one hotel having a trademark on the term.
Some of this isn't Google specific, by the way. A query for hotel on Overture's French suggestion tool causes some of the same problems as with Google's, such as:
- etap hotel
- hotel ibis
- accor hotel
Interestingly, "meridien" doesn't come up on that list, suggesting that Overture may have manually removed it to stay out of trouble. It's also worth noting that last October, Overture added a suggestion that people could check to see if a term suggested was a registered trademark using the INPI service