On 16 November 2015, the Mons Court of Appeal (the
"Court") handed down a judgment in a dispute between
Verabel, a trademark holder, and Verandas Confort, which used the
word 'Verabel' as a Google AdWord.
Firstly, Verabel contended that the use by Verandas Confort of
its trademark as an AdWord infringed Article 2.20.1 a) of the
Benelux Convention on Intellectual Property (the "BCIP")
which permits the trademark holder to prevent any third party from
"using in business a sign that is identical to the trademark
for goods or services that are identical to those for which the
trademark is registered".
The Court noted that the criterion of identity of the sign and
the trademark must be interpreted strictly in the sense that there
can only be identity between the sign and the trademark if the
former reproduces, without any modification or addition, all the
elements constituting the latter. As the trademark registered by
Verabel was a complex trademark consisting of both verbal and
figurative elements and the AdWord 'Verabel' only consisted
of a verbal element, the Court dismissed Verabel's first
Secondly, Verabel availed itself of the prohibition provided for
by Article 2.20.1 b) of the BCIP which authorises the trademark
holder to prevent any third party from "using in business
a sign in respect of which, because it is identical or similar to
the trademark and because the goods or services covered by the
trademark and the sign are identical or similar, there is a risk of
confusion in the mind of the public which includes the risk of
association between the sign and the trademark".
Referring to the decisions of the Court of Justice of the
European Union ("ECJ") in Google France (See, VBB on
Business Law, Volume 2010, No. 3, p. 6 and 7, available at
www.vbb.com) and Interflora (See, VBB on Business Law, Volume
2011, No. 9, p.3 and 4, available at
www.vbb.com), the Court recalled that the use of a third
party's trademark as an AdWord can only be prohibited to the
extent that such use is liable to cause detriment to any of the
functions of the trademark. These functions of the trademark
include, inter alia, the essential function of indicating the
origin of goods or services. According to the ECJ, that essential
function is affected if the use of the sign suggests an economic
link between the advertising company and the holder of the
trademark, or if it is unclear to the normal internet user whether
there is such an economic link.
Applying this case law, the Court went on to assess whether, in
the case at hand, it was impossible, or at least difficult, for an
average internet user to ascertain the origin of the products
advertised by Verandas Confort.
The Court noted that because verandas are subject to isolated
purchases, the brand recognition bears little relevance. As a
consequence, the Court found that consumers pay little attention to
advertisements for these types of products and have limited
knowledge of the operators active on the market. Hence, they are
unlikely to know whether the operators only offer their products or
products of other brands as well.
Given that the website of Verandas Confort is the first website
to appear when using the word 'Verabel' in Google's
search tool, the Court held that internet users are led to believe
that there is a link between the advertising company, Verandas
Confort, and the trademark holder, Verabel. According to the Court,
it is irrelevant in that regard that the link to the website of
Verandas Confort indicates "Ad" and that the content of
its website contains no reference to Verabel.
The Court therefore concluded that the AdWord Verabel created
likelihood of confusion between the goods concerned and infringed
the trademark's function of origin. As a result, Verandas
Confort was ordered to cease using the AdWord.
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