Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

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:

By: Caroline Olstedt Carlström (Stockholm)

The new digital landscape and its embrace by the corporate world create new challenges for all marketing professionals at a pace that has never before been encountered.  In fact, organisational procedures and legal standards are struggling to keep up.  Few jurisdictions have marketing regulations in place that are up-to-date with the latest digital possibilities.  Social media can be an effective tool for marketing and brand awareness, but it also poses great challenges for marketing professionals navigating new issues. 

On September 15th, the International Chamber of Commerce (ICC) presented its new 2011 Consolidated ICC Code of Advertising and Marketing Communication Practice (the “Code”). The Code raises the standards for consumer protection globally and also includes new online rules.  It is recognised as the gold standard for self-regulation and now offers best practice guidance across all sectors, technologies and platforms and guides marketing professionals as they deal with many of the most challenging topics, such as Online Behavioural Advertising (OBA), marketing in digital interactive media, privacy protection, environmental claims and marketing to children.  

The Code sets detailed conditions and limits for OBA, providing for explicit consent by the consumer and regulating both marketers and website operators participating in OBA.  This requirement also concurs with the amended E.U. ePrivacy directive that requires the user to consent to the use of cookies, which should have been implemented by all E.U. member states by May 2011.  For digital marketing communications, the Code provides clear rules for engagement.  It provides that the commercial nature of an online communication may not be concealed and marketers who control content for a social network site should take appropriate steps to ensure this.  There are also specific criteria dictating when marketers are permitted to send individually addressed, unsolicited marketing communication via digital interactive media.  Consumers should also be given the right to opt-out.  The Code also includes a provision regarding respect for the potential sensitivities of a global audience, given the reach of electronic networks and sets limits to marketing communications via public groups and at meeting places.  Moreover, communications directed to children in a particular age group should comply with specific requirements and parents should be encouraged to supervise their children’s interactive activities. 

The Code adds another layer of protection for consumers’ personal data by providing clear guidance on consumers’ rights, including the right to know what information is acquired by a marketer and the standards for the collection, use and security of personal data when it is collected.  There are also specific restrictions on disclosure of a child’s personal data to third parties.

Responsible marketing and advertising is becoming increasingly difficult and even more important in this viral era.  Internal communication tools and legal consideration of new market initiatives on a regular basis are important factors in creating successful and compliant campaigns.  The new ICC Code is an important step in order to streamline international marketing and meet its new challenges.