The indexing war on Google
The indexing war fought between companies for the purchase of keywords through Google’s Adwords program has well been declared…
Numerous companies use competing trademarks to position themselves on the famous search engine. How can protection be sought? Is it possible to take action against advertisers and/or the search engine on the basis of unfair competition or IP infringement?
As from 2009, judges have ruled out infringement of IP rights and additional damages (T.G.I. Paris - 30.04.2009).
Thus, it has been considered that “the use of a trademark as an invisible keyword for the consumer didn’t constitute use of the trademark to identify products or services.”
The decision handed down by the French supreme court, la Cour de cassation, on the 25th of September 2012, falls in the decision handed down by the European Court of Justice (ECJ) on the 23rd of March 2010 (Google France SARL and Google Inc. v. Louis Vuitton Malletier). The ECJ considered that Google’s search engine could not be held liable for infringing a trademark as it was only storing keywords and displaying advertisements in relation with the keywords purchased.
Therefore, reservation of a trademark as a keyword is insufficient to initiate action on the basis of infringement.
It is necessary to assess:
in a general manner, if the advertisement, including the keyword, aims at indicating the origin of goods or services;
more precisely, if an economical connection between the advertiser and the owner of the trademark is underlined;
if the display of the advertisement lacks transparency, and leads to confusion between the advertiser and the trademark owner.
if the advertiser is, or not, clearly identifiable.
These rules, nevertheless, leave an important leeway to national judges, consequently national case law may sometimes differ.
In the case presented, company AUTO IES sells and buys cars on the Internet and owns figurative trademark IES and verbal trademark AUTO IES.
This company initiated an action against GOOGLE FRANCE on the basis of trademark infringement, after observing that typing the words “auto ies”, “auto-ies”, and “ies” in Google’s search engine resulted in the display of commercial links pointing towards websites of its direct competitors.
Two issues were solved, one concerning liability of advertisers, and one concerning liability of the search engine Googles.
1. Concerning the liability of advertisers:
The decision states that liability cannot be sought on the basis of trademark infringement. The French supreme court affirmed the decision handed down in the same case by the Court of appeals on February 2, 2011.
It considered that “every advertisement was sufficiently precise to enable an average Internet user to identify that the goods or services targeted came from another company, and not from AUTO IES or a company economically linked to it.”
Thus, an advertiser purchasing, on Google Adwords, keywords that include trademarks of competitors that will trigger the display of commercial links pointing towards the competitors’ websites doesn’t impair the trademark’s function of identifying origin, and cannot be held liable for tradmark infringement.
2. Concerning liability of search engines
It was found that the trademark, the trade name and the company name of AUTO UES didn’t show any reprehensible features and that the advertisements were not unlawful.
The search engine Google cannot be held liable on the basis of trademark infringement.
Therefore, to determine if a legal action is relevant, the following questions must be answered:
Is the advertisement transparent?
Is the name of the advertiser clearly stated?
Does an express or implicit reference to your trademark and/or your competitor’s can be established?
Finally, the fact of not having followed up on the request for insertion of negative keywords can be taken into account.
The facts must be assessed on a case-by-case basis.
For further information and for the study of a case, feel free to contact our law firm.
By email to the attention of Anne-Katel MARTINEAU: akmartineau@medias-tic.com.
