Last June, the Provincial Court of Madrid was submitted a case of trademark infringement by Google's device known as "AdWords". More specifically, in this case, CLINICAS ORTODONCIS sued LABORATORIOS LUCAS NICOLÁS due to the use that the latter had been doing of the former's trademark as keyword for its advertising, that appeared as a sponsored link when an internet search on Google's engine the term introduced as keyword.
The system of Google AdWords is widely known nowadays. It "enables any economic operator, by means of the selection of one or more keywords, to obtain the placing, in the event of a correspondence between one or more of those words and that/those entered as a request in the search engine by an internet user, of an advertising link to its website"1. A Google sponsored link has the following structure: A hyperlinked text that leads to the advertiser's site, an "ad" disclaimer next to the advertiser's website address and, finally, a commercial text.
The defendant alleged that it had never hired the use of "ortodoncis" as a keyword for its sponsored ad; and therefore, that it should have resulted from a failure of the system. The Court did not neglect the possibility of an event like this to occur, however, it reminded LABORATORIOS has the burden of proof, when the plaintiff has offered evidences of his allegations.
In absence of new evidence, the Court concluded proven by the claimant that LABORATORIOS LUCAS had i) hired Google AdWords service; ii) used "ortodoncis" as a keyword; and, iii) included CLINICAS ORTODONCIS' trademark as part of the hyperlinked commercial text that headed the sponsored ad link.
Following, the Provincial Court of Madrid denied applying Unfair Competition rules, given the rights that the registered trademark's holder had, contrary to what the Judge on First Instance had ruled.
As a result of the provided evidence, the Court estimated that the applicant's trademark is associated by the public to the website addresses of the defendant, in which the latter promotes its services. It follows that the services come from the same source or from two different service provider that share an economic link.
This decision is nothing but surprising when compared to great precedent decisions from the Spanish Supreme Court (Decision 541/2017, 15thFebruary 2017, Orona S. Coop v. Citylift, S.A.) and the Court of Justice of the European Union – 23rdof March 2010 (Lv- Google); 25thof March, 2010 (Bergspechte), 8thof July, 2010 (Portakabin – Primakabin) and 22ndof September, 2011 (Interflora – Mark & Spencer's) -.
The above mentioned decisions went through a scrupulous process of analysis in order to determine, not only if the claimants' trademarks were used as keywords or appeared in the sponsored link, but also if these took part "in a manner in which that advertisement is presented". As expressed in Interflora.
That function is adversely affected if the advertisement does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the advertisement originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party (Google France and Google, paragraphs 83 and 84, and Portakabin, paragraph 34). In such a situation, which is, moreover, characterised by the fact that the advertisement appears immediately after the trade mark has been entered as a search term and is displayed at a point when the trade mark is, in its capacity as a search term, also displayed on the screen, the internet user may be mistaken as to the origin of the goods or services in question (Google France and Google, paragraph 85).
The Appeal Court considered that in this case, the use of the competitor's mark as a keyword had crossed those redlines drawn by the CJEU and, therefore, concluded that a trademark infringement (and not unfair competition) took place.
1 1 Decision of the EU Court of Justice of 23rdof March 2010 – Google France v. Google (C-236/08 to C-238/08)
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