In order to be at the top of the results of a search engine, many undertaking s do not hesitate to use sponsored wordings which correspond to competitor’s trademarks as keywords.
This bad habit comes from a basic error: thinking that since the words used as keyword are invisible at the exterior, this is not an unlawful action.
But it does not work like this and the recent judgement of March, 8 of the Florentine Court reminds us of this.
The question dealt with the counterfeiting of a trademark through keyword advertising, that is the introduction in the search engines of keywords corresponding to some trademarks with the aim to redirect to links of the competitor’s site or to sites offering imitations.
In the case in exam, as it is well-known, the Google’s AdWords service after searching for the keyword allows displaying in addition to the result directly linked to the keyword, short message advertising links on the right or above the natural results.
The Florentine Court shared the Court of Justice of the European Communities’ (CJEC) idea expressed during the judgement “Google France” of March, 23, 2010 (proceeding collected from C-236/08 to C-238/08) and consequently established that the question, whether the function of the trade mark is adversely affected, – when internet users are shown, starting from a keyword identical with a mark, a third party’s ad (a competitor of the proprietor of the trademark) – depends on the manner in which that ad is presented.
In particular, there is such affection when the ad does not enable or enable only with difficulty normally informed and reasonably attentive internet users to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. It is the national judge duty to concretely evaluate the case.
The Florentine Court, complying with the principles issued by the CJEC, decided that in this case the usage by the defendant of the claimant’s trademark as keyword in the Google’s search engine by using the service AdWords, which links it to the defendant’s site (the competitors of the claimant) effects the claimant’s trademark, in particular the function of indicating its origin and unlawful competition.