The protection of trademarks on the internet is one of the most important tasks of trademark protection. Many trademark infringers try to distribute their products through online platforms such as Ebay, Amazon or Wish. Furthermore, infringers often aggressively advertise their products on online search engines like Google or Yahoo, in order to be high listed in the search results. In these cases it is often very difficult to take action directly against the infringers and the trademark owners intend to ask the online platforms to erase the infringing offers or advertisements.
Even though such trademark infringements on the internet have caused serious damages, many trademark owners do not have a strategy to protect their trademarks from uses on the internet. Nevertheless, the CJEU almost a decade ago dealt with the issue of trademark infringements on the internet in several cases and it is therefore settled case law in which cases the trademark owner is entitled to take action directly against the online platforms or search engines. The CJEU decided in the Google France cases (C-236/08 to C-238/08, of 23 March 2010) that the proprietor of a trademark is entitled to prohibit an advertiser from advertising in the case where that the advertisement does not enable an average internet user to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. The CJEU further clarified in the Interflora case (C-323/09, 22 September 2011) that the proprietor of a trade mark is entitled to prevent a competitor from advertising if the advertisement adversely affects the trademark’s investment function. Therefore, according to the CJEU case law, the mere use of a trademark as search keyword is usually not infringing. However, the trademark owner may take action directly against the online platform when the offer or advertisement explicitly refers to the protected trademark.
The search engines and online platforms, in order to comply with the case law, provide Trademark Protection Systems. These Trademark Protection Systems provide protection for several infringing uses of the trademark, especially the use of the trademark in the description of the offer or the use of the trademark for counterfeit goods. Online platforms and search engines do not provide protection against the use of trademarks as search keyword, as long as the trademark is not shown in the search result.
In order to protect a trademark in the Protection Systems of the online platforms or search engines, the trademark owners have to go through a registration process. In this registration process, the trademark owner has to prove the existence of his trademark right. After having completed the registration process, the trademark owner is entitled to file specific complaints against infringing offers or advertisements. Usually, most of the complaints are accepted within one working day. The registration of trademark owners before the Trademark Protection Systems of online platforms and search engines is therefore a very quick, efficient and low cost way to stop the most infringements which are taking place on the internet.