When Google’s reputation matters – an EU Court decision

The General Court of the European Union has ruled in Case T‑ 569/21, Zoubier Harbaoui v Google LLC.

This dispute focuses our attention on a trademark application for GOOGLE CAR, filed by Mr Zoubier Harbaoui for class 12:

‘Vehicles and conveyances; Parts and fittings for vehicles; Air and space vehicles; Land vehicles and conveyances;
Water vehicles; Cable transport apparatus and installations; Air cushion vehicles; Cars for cable transport installations; Drones; Cable transport installations; Conveying installations [ski lifts]; Conveying installations (Aerial -) for the transportation of people; Cargo carriers for vehicles; Ski lifts; Aerial conveyors; Chairlifts; Vehicles’.

Against this trademark, an opposition was filed by Google Inc. based on an earlier EU trademark Google in classes 9, 35, 38, and 42. In addition, a reputation was claimed under Article 8(5) of Regulation (EU) 2017/1001.

The EUIPO confirmed the opposition finding both signs confusingly similar against the backdrop of the proven reputation of Google’s mark in the EU. The decision was appealed.

The General Court upheld the EUIPO decision. The Court found that the earlier mark’s reputation was well-established in the EU.

That difference between the goods and services covered by the marks at issue is not, in itself, sufficient to preclude certain proximity between the goods and services for the purposes of Article 8(5) of Regulation 2017/1001; a direct and immediate link between the goods and services is not necessary.

Nowadays it is widespread practice for different information technologies to be implemented in vehicles (one small example is Google Auto available in many cars). The target consumers of information technologies and vehicles are one and the same.

The Court found both signs similar. The Car word in the mark applied for is descriptive because of which first element Google has greater importance for the comparison.

Google’s mark has a strong reputation amongst consumers and if it is used by someone else for transport vehicles it is possible for consumers to relate these vehicles to Google as a company.

As correctly noted by EUIPO, the public, when purchasing a vehicle or conveyance sold under the mark applied for, will clearly
recognise the term ‘google’ and assume that the vehicles and conveyances incorporate Google technologies and tools, or that they have been developed by Google or in cooperation with Google.

Regarding the applicant’s argument that the mark WAYMO owned by the intervener and covering ‘cars’ in Class 12 would prevent him from taking unfair advantage of the earlier mark, it must first be stated that that assertion is in no way supported. Second, the mere existence of an additional mark owned by the proprietor of the earlier mark cannot have the effect of reducing or
even eliminating the risk of free-riding to the detriment of the earlier mark, where the relevant public will establish a link between the marks at issue.

Given the similarities between the marks at issue and the link which the relevant public will establish between those marks, the mark applied for carries a risk of benefiting from the attractiveness of the earlier mark, which is part of many aspects of the daily life of consumers.

The right to be forgotten – Advocate General’s opinion in a lawsuit against Google

The Advocate General of the European Court G. PITRUZZELLA has issued an opinion in the case C‑460/20 TU,RE v Google LLC. This case has the following background:

TU works in a position of responsibility or is involved, in various companies which provide financial services. RE was TU’s cohabiting partner and, until May 2015, held general commercial power of representation in one of those companies. On 27 April 2015, 4 June 2015 and 16 June 2015, the website http://www.g … net (‘the g-net website’) published three articles which expressed critical opinions and doubts as to the reliability of the investment model of several of those companies. The article dated 4 June 2015 also featured four photographs – three of TU and one of RE – in which the applicants were shown driving luxury cars, in a helicopter and in front of a charter plane. Together with the articles, those images suggested that the applicants were enjoying a life of externally financed luxury. The operator of the g-net website is G-LLC, according to the imprint. The corporate purpose of G-LLC is, according to its own statement, ‘to contribute consistently towards fraud prevention in the economy and society by means of active investigation and constant transparency’. However, various publications have criticised the business model of G-LLC, accusing that company, among other things, of attempting to blackmail companies by initially publishing negative reports and then offering to delete the reports in return for so-called protection money. The articles dated 4 June 2015 and 16 June 2015 were displayed in the list of search results produced when the applicants’ first names and surnames were entered in the search engine operated by Google, both on their own and in conjunction with particular company names, and the article of 27 April 2015 was displayed when particular company names were entered in its search engine. These results contained a link to the articles in question. Google also displayed the photographs of the applicants contained in the article dated 4 June 2015 as thumbnails in the overview of results of its image search.

The applicants requested the defendant, on the one hand, to de-reference the articles in question, which, in their view, contain a number of incorrect allegations and defamatory opinions based on false statements, and, on the other, to remove the thumbnails from the list of search results. They claimed to have been victims of blackmail by G-LLC. The defendant refused to comply with that request, referring to the professional context in which the articles and images at issue are set and invoking its ignorance as to the allegedly false nature of the information contained therein. The action was dismissed at first and second instance.

It is in that context that the Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1) Is it compatible with the data subject’s right to respect for private life (Article 7 of the Charter …) and to protection of personal data (Article 8 of the Charter), if, within the context of the weighing-up of conflicting rights and interests arising from Articles 7, 8, 11 and 16 of the Charter, within the scope of the examination of his or her request for de-referencing brought against the data controller of an internet search engine, pursuant to Article 17(3)(a) of [the GDPR], when the link, the de-referencing of which the applicant seeks, leads to content that includes factual claims and value judgements based on factual claims the truth of which is denied by the data subject, and the lawfulness of which depends on the question of the extent to which the factual claims contained in that content are true, the national court also concentrates conclusively on the issue of whether the data subject could reasonably seek legal protection against the content provider, for instance by means of interim relief, and thus at least provisional clarification on the question of the truth of the content displayed by the search engine data controller could be provided?

(2) In the case of a request for de-referencing made against the data controller of an internet search engine, which in a name search searches for photos of natural persons which third parties have introduced into the internet in connection with the person’s name, and which displays the photos which it has found in its list of search results as preview images (thumbnails), within the context of the weighing-up of the conflicting rights and interests arising from Articles 7, 8, 11 and 16 of the Charter pursuant to Article 12(b) and Article 14, first paragraph, point (a) of Directive [95/46] and Article 17(3)(a) of the GDPR, should the context of the original third-party publication be conclusively taken into account, even if the third-party website is linked by the search engine when the preview image is displayed but is not specifically named, and the resulting context is not shown with it by the internet search engine?’

The Advocate’s opinion:

Article 17(3) of Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of natural persons with regard to the processing of personal data and on the free movement of such data, and repealing Directive 95/46/EC (General Data Protection Regulation) should be interpreted as meaning that, within the context of the weighing-up of conflicting fundamental rights arising from Articles 7, 8, 11 and 16 of the Charter of Fundamental Rights fo the European Union, which is to be undertaken within the scope of the examination of a request for de-referencing made to the operator of a search engine on the basis of the alleged false nature of the information which appears in the referenced content, it is not possible to concentrate conclusively on the issue of whether the data subject could reasonably seek legal protection against the content provider, for instance by means of interim relief. In the context of such a request, it is incumbent on the data subject to provide prima facie evidence of the false nature of the content the de-referencing of which is sought, where that is not manifestly impossible or excessively difficult, in particular with regard to the nature of the information concerned. It is for the operator of the search engine to carry out the checks which fall within its specific capacities, contacting, where possible, the publisher of the referenced web page. Where the circumstances of the case so indicate in order to avoid irreparable harm to the data subject, the operator of the search engine will be able temporarily to suspend referencing, or to indicate, in the search results, that the truth of some of the information in the content to which the link in question relates is contested.

Article 12(b) and Article 14, first paragraph, point (a) of Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data and Article 17(3)(a) of Regulation 2016/679 should be interpreted as meaning that, within the context of the weighing-up of conflicting rights and interests arising from Articles 7, 8, 11 and 16 of the Charter of Fundamental Rights, in connection with a request for de-referencing made to the operator of a search engine seeking to obtain the removal, from the results of an image search carried out on the basis of a natural person’s name, of photographs displayed in the form of thumbnails depicting that person, account should not be taken of the context of the publication on the internet in which those thumbnails originally appear.

Sonos won a lawsuit against Google for key patented technologies

The US audio devices producer Sonos won a patent dispute against Google in the US.

The case concerns an accusation by Sonos that Google has used without authorization patented technologies for W-Lan connectivity and synchronization of audio playback. The concerned patents are:

• 9,195,258 (“System and method for synchronizing operations among a plurality of independently clocked digital data processing devices”)
• 10,209, 953 (“Playback device with synchronisation of a plurality of devices”)
• 9,219,959 (“Multi-channel pairing in a media system”)
• 8,588,949 (“Method and apparatus for adjusting volume levels in a multi-zone system”)
• 10,439,896 (“Connection to a playback device”).

The technologies described in these patents have been used for different Google’s devices such as Pixel smartphones, voice assistant devices etc.

As it is well-known both companies worked together in 2013 when Sonos integrated some of the Google services in its devices. According to the accusation after that, however, Google used some of the information to develop its own products.

Based on this decision the US International Trade Commission can prohibit the import of any goods into the US that violate the Sonos’ patents. This could be a problem for Google because most of its deceives are produced in Asia.

The Court’s decision is not final and can be appealed.

Source: Meyer-Dulheuer MD Legal Patentanwälte PartG mbB

Google won a dispute for STREET VIEW in Japan

The the Japan Patent Office has ruled in a case related to a trademark application for “STREET VIEW MODEL (SVM)”, written in Japanese Katakana character, for class 41: providing online non-downloadable videos and photographs’:

Against this application an opposition was filed by Google based on an earlier trademark with reputation STREET VIEW for classes 9 and 42.

Although the phrase STREET VIEW is not so unique, the Patent Office concluded that based on the acquired distinctiveness and reputation of the earlier mark, there is a possibility for a consumer confusion. This is enhanced by the fact that both business models concern digital images and videos offered via the Internet.

Source: Masaki MIKAMI, Marks IP Law Firm.

YouTube won a dispute about what is a user address in the EU

The European Court has ruled in the case C‑264/19 Constantin Film Verleih GmbH срещу YouTube LLC, which has the following background:

In Germany, Constantin Film Verleih has exclusive exploitation rights, inter alia, in respect of the cinematographic works ‘Parker’ and ‘Scary Movie 5’.

In 2013 and 2014, those works were uploaded onto the website http://www.youtube.com, a platform operated by YouTube, which enables users to publish, watch and share videos (‘the YouTube platform’). Those works have therefore been viewed several tens of thousands of times.

Constantin Film Verleih demands that YouTube and Google, the latter being the parent company of the former, provide it with a set of information relating to each of the users who have uploaded those works (‘the users in question’).

The referring court notes, in that regard, that, in order to upload videos onto the YouTube platform, users must first of all register with Google by means of a user account, the opening of that account requiring only that those users provide a name, email address and date of birth. Those data are not usually verified and the user’s postal address is not requested. However, in order to be able to post onto the YouTube platform videos lasting more than 15 minutes, the user must provide a mobile telephone number to enable him or her to receive an activation code, which is necessary in order to post. Furthermore, according to YouTube and Google’s joint terms of service and privacy policies, users of the YouTube platform consent to server logs, including the IP address, date and time of use as well as individual requests, being stored and to those data being used by participating undertakings.

After the parties to the dispute in main proceedings unanimously stated that the dispute at first instance concerning the names and postal addresses of the users in question had been formally settled, Constantin Film Verleih, which obtained only fictitious user names, requested that YouTube and Google be ordered to provide it with additional information.

That additional information concerns, first, the email addresses and mobile telephone numbers as well as the IP addresses used by the users in question to upload the files, together with the precise point in time at which such uploading took place, indicating the date and time, including minutes, seconds and time zones, that is to say, the time at which the file in question was uploaded, and, second, the IP address last used by those users to access their Google account in order to access the YouTube platform, together with the precise point in time at which access was obtained, indicating the date and time, including minutes, seconds and time zones, that is to say, the time at which the file was accessed.

By its judgment of 3 May 2016, the Landgericht Frankfurt am Main (Regional Court, Frankfurt am Main, Germany) dismissed Constantin Film Verleih’s request. However, on appeal by the latter, by judgment of 22 August 2018, the Oberlandesgericht Frankfurt am Main (Higher Regional Court, Frankfurt am Main, Germany) partially granted Constantin Film Verleih’s request and ordered YouTube and Google to provide it with the email addresses of the users in question, but dismissed the appeal as to the remainder.

By its appeal on a point of law, brought before the referring court, the Bundesgerichtshof (Federal Court of Justice, Germany), Constantin Film Verleih maintains its claims seeking an order requiring YouTube and Google to provide it with the mobile telephone numbers and IP addresses of the users in question. Furthermore, by their own appeal on a point of law, YouTube and Google claim that Constantin Film Verleih’s request should be dismissed in its entirety, including in relation to disclosure of the email addresses of the users in question.

The referring court considers that the outcome of those two appeals on a point of law depends on the interpretation of Article 8(2)(a) of Directive 2004/48 and, in particular, on the answer to the question whether the additional information requested by Constantin Film Verleih is covered by the term ‘addresses’ within the meaning of that provision.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Do the addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, mentioned in Article 8(2)(a) of Directive [2004/48] and covered, as appropriate, by the information referred to in Article 8(1) of Directive [2004/48], also include

(a)  the email addresses of service users and/or

(b) the telephone numbers of service users and/or

(c)  the IP addresses used by service users to upload infringing files, together with the precise point in time at which such uploading took place?

(2)  If the answer to Question 1(c) is in the affirmative:

Does the information to be provided under Article 8(2)(a) of Directive [2004/48] also cover the IP address that a user who has previously uploaded infringing files last used to access his or her Google/YouTube user account, together with the precise point in time at which access took place, irrespective of whether any infringement [of intellectual property rights] was committed when that account was last accessed?’

The Court’s decision:

Article 8(2)(a) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that the term ‘addresses’ contained in that provision does not cover, in respect of a user who has uploaded files which infringe an intellectual property right, his or her email address, telephone number and IP address used to upload those files or the IP address used when the user’s account was last accessed.

Revealing IP addresses, YouTube and the EU approach

The Advocate General of the European Court H. SAUGMANDSGAARD ØE issued its opinion on case C‑264/19 Constantin Film Verleih GmbH v YouTube LLC.

This dispute regards the main question whether the IP address of a copyright infringer is the same as the meaning of his/her actual address.

The case background is:

Constantin Film Verleih is a film distributor established in Germany.

YouTube, which is owned by Google and established in the United States, operates the internet platform with the same name.

In Germany, Constantin Film Verleih has exclusive exploitation rights in respect of the cinematographic works Parker and Scary Movie 5.

Between the months of June 2013 and September 2014, those two works were posted online on the ‘YouTube’ platform without Constantin Film Verleih’s consent. On 29 June 2013, the cinematographic work Parker was uploaded in its full-length version and in German under the username ‘N1’. It was viewed more than 45 000 times before it was blocked on 14 August 2013. During the month of September 2013, the cinematographic work Scary Movie 5 was uploaded in its full-length version under the username ‘N2’. It was viewed more than 6 000 times before it was blocked on 29 October 2013. On 10 September 2014, another copy of the second work was uploaded under the username ‘N3’. It was viewed more than 4 700 times before it was blocked on 21 September 2014.

Constantin Film Verleih demanded that YouTube and Google provide it with a set of information for each of the users who had uploaded those works.

The referring court found that the conditions for the right to information were satisfied. Consequently, the scope of the dispute in the main proceedings is limited to the content of the information that YouTube and/or Google must provide to Constantin Film Verleih. More specifically, the dispute concerns the following information:

–        the user’s email address,

–        the user’s telephone number,

–        the IP address used by the user to upload the files at issue, together with the precise point in time at which such uploading took place, and

–        the IP address last used by the user to access his or her Google/YouTube account, together with the precise point in time at which that access took place.

Ruling at first instance, the Regional Court, Frankfurt am Main, Germany rejected Constantin Film Verleih’s request that such information be provided.

On appeal, the Higher Regional Court, Frankfurt am Main, Germany ordered YouTube and Google to provide the email addresses of the users concerned, rejecting Constantin Film Verleih’s request as to the remainder.

By its appeal on a point of law, brought before the Federal Court of Justice, Constantin Film Verleih requested that YouTube and Google be ordered to provide it with all of the abovementioned information, including users’ telephone numbers and IP addresses. By their own appeal on a point of law, YouTube and Google requested that Constantin Film Verleih’s request be rejected in its entirety, including in so far as it concerns users’ email addresses.

Taking the view that the outcome of the two appeals on a point of law depended on the interpretation of the concept of ‘addresses’ contained in Article 8(2)(a) of Directive 2004/48, the Federal Court of Justice decided to stay the proceedings and to refer the following questions to the Court for a preliminary ruling:

‘(1)  Do the addresses of the producers, manufacturers, distributors, suppliers and other previous holders of the goods or services, as well as the intended wholesalers and retailers, mentioned in Article 8(2)(a) of Directive [2004/48] and covered, as appropriate, by the information referred to in Article 8(1) of [that] directive, also include

(a) the email addresses of service users and/or

(b) the telephone numbers of service users and/or

(c) the IP addresses used by service users to upload infringing files, together with the precise point in time at which such uploading took place?

(2)  If the answer to Question 1(c) is in the affirmative:

Does the information to be provided under Article 8(2)(a) of Directive [2004/48] also cover the IP address that a user, who has previously uploaded infringing files, last used to access his or her Google/YouTube user account, together with the precise point in time at which access took place, irrespective of whether any infringement [of intellectual property rights] was committed when that account was last accessed?’

The Advocate’s opinion:

Article 8(2)(a) of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that the concept of ‘names and addresses’ set out in that provision does not cover, in respect of a user who has uploaded files which infringe intellectual property rights, the email address, the telephone number, the IP address used to upload those files or the IP address used when the user’s account was last accessed.

Accordingly, the Member States are not obliged, under that provision, to provide for the possibility, for the competent judicial authorities, to order that that information be provided in the context of proceedings concerning an infringement of an intellectual property right

Google with a key victory regarding the right to be forgotten – an EU Court decision

The European Court has issued a decision on the case C‑507/17 Google LLC, правоприемник на Google Inc. v Commission nationale de l’informatique et des libertés (CNIL). In brief, this case concerns the right to be forgotten when it comes to searches on the internet. In details:

By decision of 21 May 2015, the President of the CNIL served formal notice on Google that, when granting a request from a natural person for links to web pages to be removed from the list of results displayed following a search conducted on the basis of that person’s name, it must apply that removal to all its search engine’s domain name extensions.

Google refused to comply with that formal notice, confining itself to removing the links in question from only the results displayed following searches conducted from the domain names corresponding to the versions of its search engine in the Member States.

The CNIL also regarded as insufficient Google’s further ‘geo-blocking’ proposal, made after expiry of the time limit laid down in the formal notice, whereby internet users would be prevented from accessing the results at issue from an IP (Internet Protocol) address deemed to be located in the State of residence of a data subject after conducting a search on the basis of that data subject’s name, no matter which version of the search engine they used.

By an adjudication of 10 March 2016, the CNIL, after finding that Google had failed to comply with that formal notice within the prescribed period, imposed a penalty on that company of EUR 100 000, which was made public.

By application lodged with the Conseil d’État (Council of State, France), Google seeks annulment of that adjudication.

The Conseil d’État notes that the processing of personal data carried out by the search engine operated by Google falls within the scope of the Law of 6 January 1978, in view of the activities of promoting and selling advertising space carried on in France by its subsidiary Google France.

The Conseil d’État also notes that the search engine operated by Google is broken down into different domain names by geographical extensions, in order to tailor the results displayed to the specificities, particularly the linguistic specificities, of the various States in which that company carries on its activities. Where the search is conducted from ‘google.com’, Google, in principle, automatically redirects that search to the domain name corresponding to the State from which that search is deemed to have been made, as identified by the internet user’s IP address. However, regardless of his or her location, the internet user remains free to conduct his or her searches using the search engine’s other domain names. Moreover, although the results may differ depending on the domain name from which the search is conducted on the search engine, it is common ground that the links displayed in response to a search derive from common databases and common indexing.

The Conseil d’État considers that, having regard, first, to the fact that Google’s search engine domain names can all be accessed from French territory and, secondly, to the existence of gateways between those various domain names, as illustrated in particular by the automatic redirection mentioned above, as well as by the presence of cookies on extensions of that search engine other than the one on which they were initially deposited, that search engine, which, moreover, has been the subject of only one declaration to the CNIL, must be regarded as carrying out a single act of personal data processing for the purposes of applying the Law of 6 January 1978. As a result, the processing of personal data by the search engine operated by Google is carried out within the framework of one of its installations, Google France, established on French territory, and is therefore subject to the Law of 6 January 1978.

Before the Conseil d’État, Google maintains that the penalty at issue is based on a misinterpretation of the provisions of the Law of 6 January 1978, which transpose Article 12(b) and subparagraph (a) of the first paragraph of Article 14 of Directive 95/46, on the basis of which the Court, in its judgment of 13 May 2014, Google Spain and Google (C‑131/12, EU:C:2014:317), recognised a ‘right to de-referencing’. Google argues that this right does not necessarily require that the links at issue are to be removed, without geographical limitation, from all its search engine’s domain names. In addition, by adopting such an interpretation, the CNIL disregarded the principles of courtesy and non-interference recognised by public international law and disproportionately infringed the freedoms of expression, information, communication and the press guaranteed, in particular, by Article 11 of the Charter.

Having noted that this line of argument raises several serious difficulties regarding the interpretation of Directive 95/46, the Conseil d’État has decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Must the “right to de-referencing”, as established by the [Court] in its judgment of 13 May 2014, [Google Spain and Google (C‑131/12, EU:C:2014:317),] on the basis of the provisions of [Article 12(b) and subparagraph (a) of the first paragraph of Article 14] of Directive [95/46], be interpreted as meaning that a search engine operator is required, when granting a request for de-referencing, to deploy the de-referencing to all of the domain names used by its search engine so that the links at issue no longer appear, irrespective of the place from where the search initiated on the basis of the requester’s name is conducted, and even if it is conducted from a place outside the territorial scope of Directive [95/46]?

(2) In the event that Question 1 is answered in the negative, must the “right to de-referencing”, as established by the [Court] in the judgment cited above, be interpreted as meaning that a search engine operator is required, when granting a request for de-referencing, only to remove the links at issue from the results displayed following a search conducted on the basis of the requester’s name on the domain name corresponding to the State in which the request is deemed to have been made or, more generally, on the domain names distinguished by the national extensions used by that search engine for all of the Member States …?

3.  Moreover, in addition to the obligation mentioned in Question 2, must the “right to de-referencing” as established by the [Court] in its judgment cited above, be interpreted as meaning that a search engine operator is required, when granting a request for de-referencing, to remove the results at issue, by using the “geo-blocking” technique, from searches conducted on the basis of the requester’s name from an IP address deemed to be located in the State of residence of the person benefiting from the “right to de-referencing”, or even, more generally, from an IP address deemed to be located in one of the Member States subject to Directive [95/46], regardless of the domain name used by the internet user conducting the search?’

The Court’s decision:

On a proper construction of Article 12(b) and subparagraph (a) of the first paragraph of Article 14 of Directive 95/46/EC of the European Parliament and of the Council of 24 October 1995 on the protection of individuals with regard to the processing of personal data and on the free movement of such data, and of Article 17(1) of Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016 on the protection of individuals with regard to the processing of personal data and on the free movement of such data and repealing Directive 95/46 (General Data Protection Regulation), where a search engine operator grants a request for de-referencing pursuant to those provisions, that operator is not required to carry out that de-referencing on all versions of its search engine, but on the versions of that search engine corresponding to all the Member States, using, where necessary, measures which, while meeting the legal requirements, effectively prevent or, at the very least, seriously discourage an internet user conducting a search from one of the Member States on the basis of a data subject’s name from gaining access, via the list of results displayed following that search, to the links which are the subject of that request.