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INTELLECTUAL PROPERTY LAW IN THE INFORMATION SOCIETY

IP LAW AND LINKING AND SEARCH ENGINES

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EXHAUSTION PRINCIPLE

(MOVED FRO LAST LECTURE)

Article 7 Exhaustion of the rights conferred by a trade mark

1. The trademark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that

trade mark by the proprietor or with his consent.

2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

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EXHAUSTION PRINCIPLE

(MOVED FRO LAST LECTURE)

3

Main rule

 Goods already put on the market

 In the Community

 By the trademark owner or with his consent

 trademark owner cannot oppose use in relation to those goods

Exception

 Legitimate reason for the trademark owner to oppose the use

 Goods changed or impaired

Discussion:

 PCs sold by HP in Sweden and imported by third party to Norway

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RECAP

(CERTAIN TRADEMARK TOPICS FROM LAST LECTURE) The Directive

The Nice Classification System The Kodak Rule

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OVERVIEW

5 Trademark issues Copyright issues Patent issues 5

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ADWORDS – INTRODUCTION

C-236/08 to C-238/08

Sponsored links vs natural hits

Google Ad Words is Google’s main advertising product and main source of revenue. Google’s total advertising revenues were USD $ 37,9 in 2010”

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ADWORDS – VARIOUS KINDS OF USE?

HP buying ”HP” as an adword to generate traffic to HP´s sites

Competitor buying “HP” as an adword to generate traffic to competitor´s sites

Partners or retailers buying “HP” as an adword to sell HP products

Distributors or retailers buying “HP” as an adword to sell competitor´s products

Competitor buying “HP” as an adword to slander

Third parties buying “HP” as an adword to sell counterfeits

Dissatisfied customer buying “HP” as an adword to slander

Hypothetically dissatisfied customer buying “HP” as an adword to slander … search engine provider (Google etc) making money regardless.

Wikipedia:

”Google Ad Words is Google’s main advertising product and main source of revenue. Google’s total advertising revenues were USD $ 28 billion in 2010”

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ADWORDS – WHAT IS THE PROBLEM?

9

Google AdWord Cases of 23. mars 2010 (joined cases C-236/08 and C-238/08) Scope: Is Google infringing the trademark of LV by selling LV as an adword

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ADWORDS – THE TRADEMARK DIRECTIVE

‘1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be

entitled to prevent all third parties not having his consent from using in the course of trade:

a) any sign which is identical with the trade mark in relation to goods or services which are identical

with those for which the trade mark is registered;

b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of

the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on

the part of the public, which includes the likelihood of association between the sign and the trade mark.

2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not

having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

3. The following, inter alia, may be prohibited under paragraphs l and 2:

a) affixing the sign to the goods or to the packaging thereof;

b) offering the goods, or putting them on the market or stocking them for these purposes under that sign,

or offering or supplying services thereunder;

c) importing or exporting the goods under the sign;

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ADWORDS – GOOGLE CASE

13

1. There has to be a ”use” of the trademark

2. That use must be done ”in the course of trade”

3. Identical or similar (w/likelihood of confusion) products or services Liable to have an adverse effect on the functions of the trade mark  Case C-487/07 L’Oréal and others

 What are the functions of the trademark?

 Adverse effect on the function of indicating origin

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ADWORDS – GOOGLE CASE

, CONT Did Google infringe the trademarks of Louis Vuitton? Para 56

“In that regard, suffice it to note that the use, by a third party, of a sign identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own

commercial communication”.

Does Google use the LV trademark in its own commercial communication  No, Google does not use the LV trademark to advertise for Google´s services

Google is enabling third parties to use the LV trademark, but Google is not “using” that trademark themselves.

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ADWORDS – OTHER LAWS

15

Though Google´s sale of LV is not a trademark infringement, it can be a breach against other regulations.

Norway: The Fair Marketing Act, Section 25 What do you think?

Also: Are Google contributing to the third parties infringement of LV trademark and can the be held liable for that?

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ADWORDS – E-COMMERCE DIRECTIVE

16

Article 14 - Hosting

1. Where an information society service is provided that consists of the storage of

information provided by a recipient of the service, Member States shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that:

(a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or

(b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

2. Paragraph 1 shall not apply when the recipient of the service is acting under the authority or the control of the provider.

3. This Article shall not affect the possibility for a court or administrative authority, in accordance with Member States' legal systems, of requiring the service provider to

terminate or prevent an infringement, nor does it affect the possibility for Member States of establishing procedures governing the removal or disabling of access to information.

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ADWORDS – E-COMMERCE DIRECTIVE

, CONT

17

Article 15 - No general obligation to monitor

No general obligation to monitor

1. Member States shall not impose a general obligation on providers, when providing the services covered by Articles 12, 13 and 14, to monitor the

information which they transmit or store, nor a general obligation actively to seek facts or circumstances indicating illegal activity.

2. Member States may establish obligations for information society service providers promptly to inform the competent public authorities of alleged illegal activities undertaken or information provided by recipients of their service or obligations to communicate to the competent authorities, at their request, information enabling the identification of recipients of their service with whom they have storage agreements.

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ADWORDS – E-COMMERCE DIRECTIVE

, CONT Can Google evoke E-commerce directive?

C-238/08 Conclusion:

Article 14 of Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society

services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played

such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained

knowledge of the unlawful nature of those data or of that advertiser’s

activities, it failed to act expeditiously to remove or to disable access to the data concerned.

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ADWORDS – GOOGLE CASE

, CONT

19

There has to be a ”use” of the trademark

Yes

That use must be done ”in the course of trade”

Yes

Coincidence between the markets

May or may not be the case

Liable to have an adverse effect on the functions of the trade mark  What are the functions of the trademark?

 Adverse effect on the advertising function

 No (para 98)

 Adverse effect on the function of indicating origin

 May or may not be the case

 does the advertiser suggest an economic connection (para 82 – 90)

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20

82 The essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him to distinguish the goods or service from others which have another origin (see, to that effect, Case C-39/97 Canon [1998] ECR I-5507, paragraph 28, and Case C-120/04 Medion [2005] ECR I-8551, paragraph 23).

83 The question whether that function of the trade mark is adversely affected when internet users are shown, on the basis of a keyword identical with a mark, a third party’s ad, such as that of a competitor of the proprietor of that mark, depends in particular on the manner in which that ad is presented.

84 The function of indicating the origin of the mark is adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services

referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party (see, to that effect, Céline, paragraph 27 and the case-law cited).

86 Still with regard to adverse effect on the function of indicating origin, it is worthwhile noting that the need for transparency in the display of advertisements on the internet is emphasised in the European Union legislation on electronic commerce. Having regard to the interests of fair trading and consumer protection, referred to in recital 29 in the preamble to Directive 2000/31, Article 6 of that directive lays down the rule that the natural or legal person on whose behalf a commercial

communication which is part of an information society service is made must be clearly identifiable. …

89 In the case where a third party’s ad suggests that there is an economic link between that third party and the proprietor of the trade mark, the conclusion must be that there is an adverse effect on the function of indicating origin.

90 In the case where the ad, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the goods or services at issue that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the trade mark.

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JARLE ROAR SÆBØ

+47 95 22 0068

JRS@HP.COM

References

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