Use of trademarks in the advertising links of the search engines
15.10.2006
Jugdment of the Court of First Instance of Paris of 12/07/2006 regarding trademarks in sponsored links of Google
The factsThe website of GOOGLE FRANCE, the google.fr search engine, proposes sponsored links. A site with such a commercial link is referenced under a banner entitled "commercial links" for each search done by the search engine on keywords chosen by the advertiser. This advertising system is referred to as adwords.The GIFAM (Interprofessional Group of the Manufacturers of Household Equipment) and several companies members stated that Google proposed to its customers advertisers a list of keywords among which were found trademarks registered to the names of household equipment manufacturers, such as "Vedette", "Brandt", "Moulinex"...The search of these trademarks in google.fr thus displays commercial links for four types of sites :- resellers of electrical household appliances,- auction sites,- sites to compare prices, and- sites without any relation with home electricals. On July 18th of 2005, the GIFAM and the companies cited the GOOGLE FRANCE company for trademark infringement, prohibition and compensation.
Concerning Google's liabilityThe Google company proposing trademarks in the keyword list, it cannot pretend to its non liability according to the French Law 2004-575 of 21/06/2004 on Confidence in the Digital Economy according which whoever provides the data storage is not responsible for its content.
Concerning trademarks infringement and/or the prejudice to well-known trademarks- by the keyword generatorThe Court considers that proposing trademarks as keywords to advertisers is not an infringement act. Indeed, Google cannot know a priori if the advertiser is not a distributor or a licensee.- by the advertisementAccording to the Court, only the advertiser by choosing the keyword and the Internaut by entering it to make its search will put in link the sign (the keyword) and the product designated by the trademark. Therefore, Google's liability during the display of the commercial links cannot be searched on the basis of the trademark infringement.Concerning the civil liability of the Google company because of the "adwords" systemAccording to Article 1382 of the French Civil Code, for the liability to be recognized, the fault, the prejudice suffered and the relation between both of them have to be demonstrated.- Google's fault was recognized by the Court for the company did not check after the keyword choice if the advertiser had rights on the selected trademarks, when all the trademarks in question are well-known trademarks, which made the previous control easier as for the Court,- the prejudice against the companies was not demonstrated, since these latters did not provide any analysis of the legality or the illegality of the use of their trademarks by advertisers,- the prejudice against the GIFAM group was recognized, since its objective is to defend the collective interests of the industries.
Concerning misleading advertisingAccording to the dispositions of Article L.115-33 of the French Consumer Code, the trademark owners can oppose to the fact that advertising texts mentioning their trademark are issued when the use of this trademark intends to mislead the consumer or that it is done in bad faith.The Court considered that the heading "commercial links" is misleading because it leads the Internaut to believe that a commercial link exists between the site mentioned and the trademark searched as a keyword. But, according to the report produced by the GIFAM, sites appear in the commercial links which do not propose any products of the searched trademark.Thus the Google company, by choosing the term "commercial links" in order to present the advertisements of the sites, some of which do not have the autorization to use the keyword signs, made misleading advertising.
