ECJ rulings on Google keywords might not resolve controversy, warns High Court

A widely-requested European Court of Justice (ECJ) ruling on keyword advertising may fail to give businesses in the UK and Ireland the legal clarity it would give to the rest of Europe, a High Court judge has warned.

Mr Justice Arnold last week referred two cases to the ECJ, the European Union's highest court, so that it could decide whether or not the use of a trade mark as a trigger for someone else's advertising is trade mark infringement.

But he said that even if the ECJ was to rule on the issue, which is not certain, it could still leave British businesses in the dark because Google's UK and Ireland trade mark policy is different to that in the rest of the EU.

"Since May 2008 Google has had a different policy in the United Kingdom and Ireland to its policy elsewhere in Europe," he said in his ruling. "That in itself is fairly remarkable given that the relevant law is, or should be, essentially the same throughout Europe. It may mean, however, that the common European set of answers must be amplified or qualified so far as the position in the United Kingdom and Ireland is concerned."

Pressure is building on the ECJ to clear up the increasingly contentious area of trade mark law. Mr Justice Arnold said that already three French cases had been referred to the Court, along with two German cases and one Dutch one. Last week he added two British cases to that list.

They all seek clarification on whether or not the use of a trade marked term as a keyword constitutes "use in trade", and therefore trade mark infringement, according to EU law. Companies buy the right for their adverts to appear beside the 'natural' search results when a particular keyword is typed into the search engine.

Mr Justice Arnold put off making a final decision in a dispute between Interflora and Marks & Spencer (M&S), saying that it can only be settled once the ECJ has cleared up the status of keywords. Pinsent Masons, the law firm behind OUT-LAW.COM, is acting for Interflora in the case.

The dispute centred on the biggest of the keyword systems, Google's AdWords. M&S bought the right for its ads to be displayed when terms such as 'Interflora' and 'Interflora flowers' were searched for on the site.

The adverts triggered by the keywords promoted M&S's own flower delivery service, though when the court checked Google, the M&S ads were displayed below Interflora's own.