By: Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny. In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords.
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case. Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:
Those involved in the fashion and retail industries are well aware of the challenges associated with combating the global proliferation of commercial-scale counterfeiting and piracy. With legal rights and remedies often varying on a country-by-country basis, enforcement of intellectual property rights on an international scale can often be fraught with unexpected hurdles and inconsistent outcomes. The Anti-Counterfeiting Trade Agreement (“ACTA”) aims to change that.
On October 1, 2011, eight countries signed ACTA, namely Australia, Canada, Japan, Morocco, New Zealand, Singapore, South Korea and the U.S. A signing ceremony was held in Tokyo by the Government of Japan. Representatives of the E.U., Mexico, and Switzerland attended the ceremony and confirmed their continuing support for ACTA. Those three sovereignties are in the process of finalizing domestic procedures in preparation to sign, and their signatures are expected by May 1, 2013. Collectively, these eleven countries represent more than half of the world’s trade.
ACTA signifies an important step forward in the international fight against trademark counterfeiting and copyright piracy. It establishes a legal framework on an international scale that includes criminal enforcement, border measures and civil and administrative actions. Specifically, ACTA gives border enforcement authorities the ability to act on their own initiative to suspend the release of, or to detain, both imports and exports of counterfeit and pirated goods. It authorizes criminal authorities to initiate investigations or legal actions with respect to piracy and counterfeiting cases rather than having to wait for a complaint to be filed. ACTA further provides for criminal procedures and penalties where willful piracy or counterfeiting is carried out for commercial advantage. Criminal remedies are also made available for willful importation or domestic use of labels and packaging for counterfeit goods. In addition, ACTA contains enhanced civil enforcement provisions concerning damages, including the ability to recover costs and attorneys fees and to destroy infringing goods. Further, ACTA clarifies existing international requirements to protect against circumventing digital security measures and promotes best practices to aid in enforcement.
In theory, under ACTA, brand owners and copyright holders will have better access to a consistent legal system to crack down on counterfeiters and pirates; will be able to obtain court orders to stop illegal activity; and will be able to secure meaningful damages remedies when their rights are violated. While ACTA may make enforcement easier in many countries, some of the largest markets for pirated and counterfeit goods are not included and the world-wide fight against counterfeiting is far from over. Brazil, China, India, Russia and South Africa all contribute to the world’s counterfeiting and piracy problems, and none are parties to ACTA.
Some countries are concerned that while ACTA significantly enhances protections for intellectual property rights- holders, it simultaneously threatens the critical balance of intellectual property law and challenges due process rights of citizens. For example, the Brazilian parliament is debating recently proposed “Anti-ACTA” legislation. The proposed legislation contains provisions that protect Internet neutrality and individuals’ privacy and personal data. Brazil’s proposed legislation attempts to guarantee protections for Internet users and prohibits the strong enforcement measures that ACTA provides.
While counterfeiting and pirated goods continue to affect world trade, ACTA seeks to offer some consistency in the application of the variety of methods for brand owners and copyright holders to combat counterfeiting and piracy. It remains to be seen, however, how these rights and remedies will operate in practice, especially for the fashion and apparel industries.