Alien trademark in contextual advertising: legal or not?
The idea of using someone else’s trademark to “promote” their products or services is as old as the world, however, has not lost its popularity. In modern Russian judicial practice, the consideration of cases related to the violation of trademark rights is not uncommon. And, it must be said, the courts are familiar with such cases and, if there is sufficient evidence, decide in favor of the trademark owner. However, the cases of using a foreign trademark on the website in the form of a logo, a title or in a domain name are mainly considered. As for the cases on the use of other people's verbal trademarks in the html-code of the site and in the keywords of contextual advertising , they can be literally counted on fingers, and their solutions are rather contradictory. Some of them are under the cut.
But, first of all, let's talk about what provisions regarding the protection of trademark rights exist in Russian legislation .
Recall that a trademark can be a graphic or verbal designation, or their combination (combined), which serves to “individualize” a product, i.e., isolating it from a number of similar ones. This can be a name, for example, “Apple” or “Yandex”, or an advertising motto (“Fly Aeroflot airplanes!”). It is clear that a trademark, as a verbal designation, can be used as a keyword in SEO optimization, as well as “wired” in the html code of the site page. But Article 1484 of the Civil Code tells us that no one has the right to use the same or very similar trademark without the permission of its owner. Moreover, according to the same article of the Civil Code of the Russian Federation, this also applies to the use of the mark on the Internet. The infringer of copyright court usually punishes the ruble, and quite severely. Thus, there are legal grounds for the protection of the infringed rights to a trademark in court. But how successful is this judicial protection in practice? After all, neither the keyword nor the html-code are not specified in the law of ways of addressing.
According to paragraph 2 of article 1484 of the Civil Code of the Russian Federation:
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Consider the case when a foreign trademark was used in the html-code of the site pages . Organization "A" was the owner of a verbal trademark. When entering the designation of this trademark in the search engine of the Rambler system, the site also appeared in the issue of the organization B, which offered products similar (or, if using legal terminology, homogeneous) to those produced by organization A. “A” appealed to the court with a demand to recognize the actions of “B” as illegal and oblige “B” to eliminate the violations (there were no claims for the payment of damages or compensation).
In support of their arguments, company "A" provided a printout of the source html-code of the page, where the header under the tag, in addition to the site name and keywords, also contained a verbal designation registered by the plaintiff (organization "A"). The domain on which the page with the controversial verbal designation in the code was placed was registered to the organization “B”, thus it was possible to prove the connection between the organization “B” and the placement of the trademark.
The case went on for a long time by the courts of various instances, but in the end, after two years of disputes, the requirements of Company A were satisfied by the Federal Arbitration Court of the North-West District. On the issue of the very notion of the “html-code”, the claimant and the respondent submitted to the court expert opinions, which were made by university professors, as well as Rambler Internet Holding. Based on the explanations of the experts and the representative of “Rambler”, the court concluded that the use of the trademark in the html-code is not an addressing method.
However, the court found that the use of company B of the controversial trademark in the development of the html-code of its website, when consumers turned to the search engine, led to the possibility of consumers mixing companies offering similar products. The actions of organization “B”, therefore, were deemed illegal.
From the resolution of 22.03.2010. FAS of the North-Western District on the case number A56-1580 / 2008:
With regard to the use of someone else's trademark in keywords in contextual advertising , here the courts, oddly enough, have the opposite opinion. So, for example, the organization “T”, which is the copyright holder of a trademark (the name of the products manufactured by it), when entering this name in the search bar in the Yandex system, found an advertisement on the Yandex.Direct service in the search results. This ad contained a link to the site of an individual entrepreneur distributing similar products. In this case, the trademark in the title or ad text was not used. Organization "T" appealed to the court, where Yandex was involved as an interested party. According to the letter submitted in court from Yandex, “keywords and phrases are in no way associated with an advertising link. They are not part of an advertisement, are not publicly accessible on the Internet, are not displayed by the Internet user in any other way, and are not related to the redirection of a user using an advertising link. This is just a technical parameter set by the advertiser in the interface of the advertising campaign (available only to the advertiser himself) ”. Based on these arguments, the courts of first and appeal instances refused to satisfy the claim.
In another similar case, the company “M” in the search results in “Yandex” by the name of its products - a trademark registered for “M”, discovered an ad from company “P” leading to the website of this organization where similar products were offered. As in the previous case, the text and the title of the ad did not contain a trademark. Company "M" appealed to the court, which refused to meet the requirements of the recognition of the illegal placement of the trademark in the keywords of contextual advertising. “M” appealed the decision and reached the cassation instance, which sent the case for reconsideration. However, the court of first instance again refused to satisfy the claim, arguing that the keywords are not part of the advertisement itself and are not aimed at individualization of the goods.
From the decision of the Arbitration Court of the city of Moscow dated December 13, 2012 in case No. A40-36511 / 11:
What have we come to? If using a foreign trademark in the html-code is more or less clear, then the question of keywords remains open.
In our opinion, the question of applying a trademark in keywords of contextual advertising should be decided unequivocally, taking into account the opinion of the Federal Antimonopoly Service of the North-Western District: any use of a trademark on the Internet, resulting in the “mixing” of goods or services by users, without the permission of the owner unlawful. After all, in fact, when using one organization in the keywords of contextual advertising of a verbal trademark of another organization, the user, when searching for a product of a certain brand, receives a link to a similar product from another manufacturer in the most prominent place of search results. That is, in reality a situation is created when one organization, using the “technical parameter”, acquires a competitive advantage through the use of a trademark of another organization — attracts users to its products. And this, you see, is not good.
References to sources:
But, first of all, let's talk about what provisions regarding the protection of trademark rights exist in Russian legislation .
Recall that a trademark can be a graphic or verbal designation, or their combination (combined), which serves to “individualize” a product, i.e., isolating it from a number of similar ones. This can be a name, for example, “Apple” or “Yandex”, or an advertising motto (“Fly Aeroflot airplanes!”). It is clear that a trademark, as a verbal designation, can be used as a keyword in SEO optimization, as well as “wired” in the html code of the site page. But Article 1484 of the Civil Code tells us that no one has the right to use the same or very similar trademark without the permission of its owner. Moreover, according to the same article of the Civil Code of the Russian Federation, this also applies to the use of the mark on the Internet. The infringer of copyright court usually punishes the ruble, and quite severely. Thus, there are legal grounds for the protection of the infringed rights to a trademark in court. But how successful is this judicial protection in practice? After all, neither the keyword nor the html-code are not specified in the law of ways of addressing.
According to paragraph 2 of article 1484 of the Civil Code of the Russian Federation:
The exclusive right to a trademark can be exercised for the individualization of goods, works or services for which the trademark is registered, in particular, by placing the trademark ... in advertisements, on signs and in advertising, as well as on the Internet, including including the domain name and other addressing methods
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Consider the case when a foreign trademark was used in the html-code of the site pages . Organization "A" was the owner of a verbal trademark. When entering the designation of this trademark in the search engine of the Rambler system, the site also appeared in the issue of the organization B, which offered products similar (or, if using legal terminology, homogeneous) to those produced by organization A. “A” appealed to the court with a demand to recognize the actions of “B” as illegal and oblige “B” to eliminate the violations (there were no claims for the payment of damages or compensation).
In support of their arguments, company "A" provided a printout of the source html-code of the page, where the header under the tag, in addition to the site name and keywords, also contained a verbal designation registered by the plaintiff (organization "A"). The domain on which the page with the controversial verbal designation in the code was placed was registered to the organization “B”, thus it was possible to prove the connection between the organization “B” and the placement of the trademark.
The case went on for a long time by the courts of various instances, but in the end, after two years of disputes, the requirements of Company A were satisfied by the Federal Arbitration Court of the North-West District. On the issue of the very notion of the “html-code”, the claimant and the respondent submitted to the court expert opinions, which were made by university professors, as well as Rambler Internet Holding. Based on the explanations of the experts and the representative of “Rambler”, the court concluded that the use of the trademark in the html-code is not an addressing method.
However, the court found that the use of company B of the controversial trademark in the development of the html-code of its website, when consumers turned to the search engine, led to the possibility of consumers mixing companies offering similar products. The actions of organization “B”, therefore, were deemed illegal.
From the resolution of 22.03.2010. FAS of the North-Western District on the case number A56-1580 / 2008:
... a violation of the rights of a trademark owner may occur not only when using a confusingly similar designation in a domain name and other ways of addressing, but also in another way on the Internet if, as a result of such use, consumers have the probability of mixing the producers of these goods and services. The use of a domain name and other methods of addressing is not the only possible way to use a trademark on the Internet, as indicated by the phrase “in particular
With regard to the use of someone else's trademark in keywords in contextual advertising , here the courts, oddly enough, have the opposite opinion. So, for example, the organization “T”, which is the copyright holder of a trademark (the name of the products manufactured by it), when entering this name in the search bar in the Yandex system, found an advertisement on the Yandex.Direct service in the search results. This ad contained a link to the site of an individual entrepreneur distributing similar products. In this case, the trademark in the title or ad text was not used. Organization "T" appealed to the court, where Yandex was involved as an interested party. According to the letter submitted in court from Yandex, “keywords and phrases are in no way associated with an advertising link. They are not part of an advertisement, are not publicly accessible on the Internet, are not displayed by the Internet user in any other way, and are not related to the redirection of a user using an advertising link. This is just a technical parameter set by the advertiser in the interface of the advertising campaign (available only to the advertiser himself) ”. Based on these arguments, the courts of first and appeal instances refused to satisfy the claim.
In another similar case, the company “M” in the search results in “Yandex” by the name of its products - a trademark registered for “M”, discovered an ad from company “P” leading to the website of this organization where similar products were offered. As in the previous case, the text and the title of the ad did not contain a trademark. Company "M" appealed to the court, which refused to meet the requirements of the recognition of the illegal placement of the trademark in the keywords of contextual advertising. “M” appealed the decision and reached the cassation instance, which sent the case for reconsideration. However, the court of first instance again refused to satisfy the claim, arguing that the keywords are not part of the advertisement itself and are not aimed at individualization of the goods.
From the decision of the Arbitration Court of the city of Moscow dated December 13, 2012 in case No. A40-36511 / 11:
... Based on the meaning of paragraphs 2, 3, Art. 1484 of the Civil Code of the Russian Federation, the granting of legal protection to trademarks is connected with the need for individualization of goods among similar ones in the course of civil turnover and is justified by the need to prevent the goods (services) from mixing. ... At the same time, as you can see, keywords are not part of the advertisement itself, are not included in its content and are not shown to users. In this regard, users do not have information about the keywords for which the advertisement shown by the Yandex.Direct system is placed, and they cannot correlate a specific advertisement with specific keywords.
As you can see, it is just such an indication of a trademark without pursuing the goal of individualization of goods by advertisers in the Yandex.Direct service, for technical purposes, and cannot result in the mixing of goods (services)
What have we come to? If using a foreign trademark in the html-code is more or less clear, then the question of keywords remains open.
In our opinion, the question of applying a trademark in keywords of contextual advertising should be decided unequivocally, taking into account the opinion of the Federal Antimonopoly Service of the North-Western District: any use of a trademark on the Internet, resulting in the “mixing” of goods or services by users, without the permission of the owner unlawful. After all, in fact, when using one organization in the keywords of contextual advertising of a verbal trademark of another organization, the user, when searching for a product of a certain brand, receives a link to a similar product from another manufacturer in the most prominent place of search results. That is, in reality a situation is created when one organization, using the “technical parameter”, acquires a competitive advantage through the use of a trademark of another organization — attracts users to its products. And this, you see, is not good.
References to sources:
- Civil Code of the Russian Federation of December 18, 2006, No. 230- - Part 4.
- The decision of the Arbitration Court of the city of St. Petersburg and the Leningrad Region of September 1, 2008 on case number A56-1580 / 2008 .
- The decision of the Arbitration Court of the city of St. Petersburg and the Leningrad Region of 07/30/2009 in case number A56-1580 / 2008 .
- Resolution of the Federal Arbitration Court of the North-Western District of March 22, 2010 in case No. A56-1580 / 2008.
- The decision of the Arbitration Court of the city of St. Petersburg and the Leningrad Region of June 25, 2010 in case No. A56-1580 / 2008.
- The decision of the Arbitration Court of the Volgograd Region of April 10, 2012 in case No. A12-1125 / 2012.
- Resolution of the Twelfth Arbitration Court of Appeal of June 13, 2012 on case No. 12-1125 / 2012.
- The decision of the Arbitration Court of the city of Moscow dated 11.17.2011 in case number A40-36511 / 11.
- Resolution of the Federal Arbitration Court of the Moscow District of 28.05.2012, in case number A40-36511 / 11.
- The decision of the Arbitration Court of the city of Moscow dated 13.12.2012 in case number A40-36511 / 11
Source: https://habr.com/ru/post/284814/
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