Here is another case of a trademark being used as a keyword to trigger commercial results on Google search engine. The facts are not original. The court’s decision is not either. However, it is a good opportunity to remind where the French courts stand on the question of commercial advertisement on internet search engines.
A company selling gothic products online filed a trademark infringement and an unfair competition lawsuit against another company selling gothic products online. The former blamed the latter both for using its trademark (also its former company name and its current business name) as a keyword in Google’s Adwords services and for not registering said trademark as a negative keyword after it was notified of potential infringement.
On 28 February 2017, the Court of Appeals of Versailles, confirming the judgment of First Instance Court of Nanterre of 26 November 2015, logically recalled the plaintiff that there was no arguing about the selection of keywords, either positive or negative, since a trademark owner cannot prevent a third party from using an identical or similar sign as a keyword except when such use harms the functions of the mark.
And, according to the Court of Justice of the European Union (INTERFLORA, judgment of 22 September 2011, case C-323/09), “The proprietor of a trade mark is entitled to prevent a competitor from advertising – on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor’s consent – goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the trade mark. Such use adversely affects the trade mark’s function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party” (See our special dossier as well).
In our case, the commercial ads made no reference whatsoever to the plaintiff’s trademark. They only contained generic terms such as “gothic shop” and the URL address of the defendant’s website.
For the judges, no confusion may arise in the mind of the normally informed and reasonably observant consumer and the trademark infringement complaint was rejected.
The plaintiff and appellant was not luckier as far as its unfair competition action was concerned. First, because the criticized commercial hyperlink could not characterize in itself an act of unfair competition since it did not create any likelihood of confusion between both companies or their websites. Second, because the defendant could not be blamed for any other behaviour, even less for a wrongful action.
Since our special dossier about commercial advertisement on the internet (here), things have not changed. On the contrary, French court decisions are more numerous now and one might even say that they are tougher on trademark owners. It seems to appear that, lest one’s trademark is reproduced within the title or within the text of the ad shown amongst the commercial results, chances of getting a trademark infringement verdict are almost nil.
However, one must not feel too pessimistic. Very often, combining an active watch over commercial ads generated by one’s trademark and a sensible and practical policy of protection and warning letters can put an end to actions that one may legitimately find troubling as a trademark owner and an online merchant.