By sentence of 17th August 2020, the Court of Milan ruled on the use of a trademark, by a person other than the owner, as keyword advertising.
The Court of Justice of the European Union had already intervened on this subject in the “Interflora” leading case, establishing that “when the ad of the third party overshadows the existence of an economic link between that third party and the proprietor of the trademark, it must be concluded that there is a breach of the function of indication of origin of that mark“.
Briefly, the Court held that infringement of the right of the trademarks was claimed when the actual use of someone else’s trademark did not allow or would allow with difficulty the normally informed and attentive Internet user to recognize whether or not the goods or services to which the advertisement relate came from the proprietor of the trademark.
In the case examined by the Court of Milan, a company proprietor of a European trademark complained that its exclusive right had been breached because its trademark appeared in the results of a well-known search engine in the context of advertisements referring to the website of a competing company.
In line with the European Statute, the Court recalled that:
“the proprietor of a trade mark shall have the right to prohibit a competitor from using that distinctive sign as a keyword in a search engine where the use of that mark could undermine one of the functions of the trademark, i.e. when it undermines or may prejudice its essential function of guaranteeing consumers the origin of the product.”
The order states that “the use of the applicant’s trade mark as keyword advertising or sponsored link is intended to exploit the reputation and notoriety of the trademark of others to accredit its products”, so it accepted the applicant’s application, pointing out that the trademark had been used in such a way as to make consumers assume that there was a commercial link between the two companies and therefore in complete conflict with the principles of loyalty and fairness.
The applicant also complained the infringement of the rights of economic use as well as unfair competition under Article 2598 of the Civil Code, in view of the defendant unauthorized and abusive use of certain photographs.
The Court of First Instance also upheld the action from that point of view.
In particular, the Court found that the unauthorized reproduction of the photographs used by the applicant in its company communication constituted, in addition to a full violation of the rules of professional fairness, an unfair competitive advantage for the resistant company which, by exploiting the work of others, saved both time and cost on the preparation of its advertising material.