If phishing adverts are placed via Google Ads using third-party trademarks, trademark owners can claim against Google as a disruptive party under the DSA.
The EU’s Digital Services Act is intended to create a secure internet and therefore imposes various obligations on providers of certain online services. A current example shows the impact the regulation can also have on trade mark law and how this can help trade mark owners in the event of unlawful use of their trade mark by third parties on Google.
I. What had happened?
The plaintiff in the injunction, Skinport GmbH, operates an online marketplace for the purchase and sale of skins for various computer games, including Counter-Strike: Global Offensive ( CSGO for short). It is also the owner of the European Union trademark “Skinport” and an advertising customer of the defendant in the injunction, Google Ireland Limited. Since 2019, Skinport has placed adverts via “Google Ads” that are displayed to users when they enter certain search terms and redirect them to the company’s website – skinport.com.
In 2023, Skinport GmbH became aware of various phishing adverts. Third parties placed web adverts, also via Google Ads, which identified the website of the plaintiff in the injunction – skinport.com – but redirected users to false landing pages. In this way, the third-party providers attempted to obtain account and payment data from Skinport customers. Skinport GmbH then demanded that Google refrain from using the “Skinport” sign for third-party adverts without its consent.
However, as Google did not want to issue a cease-and-desist declaration with a penalty clause in response to the warning from Skinport hint, Skinport was forced to seek legal assistance.
In preliminary injunction proceedings, the Düsseldorf Regional Court prohibited Google from using the “Skinport” sign for third-party adverts without the owner’s consent. The regional court (case no. 2a O 112/23) has now dismissed Google’s appeal against the preliminary injunction as unfounded.
II Google the interferer
The court clarified that although Google is not liable as a perpetrator or participant, it is a disturber within the meaning of Art. 6 para. 1 DSA.
The third-party adverts on Google constitute a commercial use of Skinport’s trademark and therefore – as this was done without Skinport’s consent – an infringement of its trademark rights. As an online search engine, Google only provides the possibility to place advertisements and is therefore neither the perpetrator of the trade mark infringement nor a participant, as this would have required conditional intent with regard to aiding and abetting.
However, Google is an intermediary service provider within the meaning of the Digital Services Act, which stores the information provided on behalf of its users. They have a minor obligation to monitor the data provided to them and to check it for unlawfulness. Furthermore, according to Art. 6 DSA, there is also no liability for information provided by users if a service provider has no actual knowledge of its illegality.
However, this does not affect the ability of Member State judicial and administrative authorities to require service providers to stop or prevent certain offences. Since, for the protection of intellectual property in the EU, rightholders can apply for a court order against intermediaries whose services are used by a third party for the purpose of this infringement in the event of an (imminent) infringement of an intellectual property right, the warning letter from Skinport, in the opinion of the Düsseldorf Regional Court, triggered the liability of Google as a search engine operator. The warning letter had provided Google with sufficiently specific information about the infringements, meaning that Google was obliged to remove and cease and desist the infringements.
III What does this mean for trade mark owners?
If trademark owners discover an infringement of their protected trademark on Google, they should act immediately and inform Google of the infringement and request that it remove and cease and desist. The Regional Court conclusively reasoned that the first warning issued to Google by the plaintiff in the injunction already triggered the company’s liability for subsequent trade mark infringements and that Google, as a search engine operator, was sufficiently informed of clear infringements. It is accordingly liable for all core infringements reported thereafter.
Awareness does not require that each individual, core-like infringement must first be brought to the attention of a company. According to the regional court, effective protection of trade mark owners would otherwise come to nothing, as the trade mark owners would otherwise first have to accept each trade mark infringement. If Google can easily recognise through the warning that the obligation to check only includes those advertisements that show the specific infringements – in this case the advertisement of the domain skinport.com without an actual link to it – this is sufficient.
If trade mark owners do not act, they are threatened with lasting damage to the distinctiveness and reputation of their trade mark, which cannot be subsequently removed, or at least only with difficulty.