Selection of court decisions. Keywords and trademarks
From time to time, the courts consider cases of such category as using trademarks as keywords (in Russia for the time being it is only about using in Yandex.Direct and Google AdWords services, although such services as Baidu Paid Search are also involved abroad. , Ebay and others). The article discusses some significant cases for Russian and foreign judicial practice, which give some idea of ​​what might actually be behind such use of keywords.
Date of decision: 13.12.2012
Link to the solution: http://sudact.ru/arbitral/doc/ZgKbUOdWKhJx/?page=11
Plaintiff: MEGA GROUP Ltd.
Respondent: LLC PS ELEKTRIK
Keywords: "Kontaktika"
Trademarks: the claimant belongs to the TK "CONTACTICA CONTACT" according to certificate â„–341280
Court decision: the claim is denied
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The lawsuit was filed due to the fact that the respondent, according to the plaintiff, illegally uses his registered trademark on the Internet under the domain name www.pc-electric.ru , and also uses it as a keyword for his ads in the Yandex advertising service. Direct.
The court concluded that the indication of a trademark as a keyword in the Yandex.Direct service is not a use of a trademark for the following reasons.
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 can be seen from the case materials, it is such an indication of a trademark without pursuing the goal of individualization of goods carried out by advertisers in the Yandex.Direct service, for technical purposes, and cannot lead to the mixing of goods (services).
Therefore, keywords in the Yandex.Direct service cannot have the individualizing ability with respect to any goods, services or persons.
Thus, the indication of a designation similar to the degree of confusion with the claimant’s trademark as a keyword cannot be recognized by the court as being used in the sense of art. 1484 of the Civil Code of the Russian Federation, as it does not individualize any goods, or the advertiser itself; does not create the possibility of mixing the goods of the plaintiff and the advertiser; is one of the technical criteria for displaying an ad in the Yandex.Direct service.
In addition, the plaintiff did not prove that PS ELEKTRIK LLC is the appropriate defendant in the case, the person who placed the claimant’s trademark as keywords in the Yandex.Direct Service. The plaintiff has not submitted any evidence confirming that the placement of advertising materials indicating the trademark as a keyword in the Yandex.Direct Service was performed by the respondent.
Note: The first trial in this case was in 2011, when the court of first instance recognized the actions of the defendant as violations of the plaintiff’s rights. The Court of Appeal overturned the decision of the court of first instance, and refused to satisfy the claim. The court of cassation instance reversed the previous decision and decision and sent the case for a new consideration, which took place on 13.12.2012 and the text of the decision of which is already set forth above.
Date of decision: 04/09/2013
Link to the solution: sudact.ru/arbitral/doc/FVEkD1mRV9Vr
Plaintiff: KM-Elite LLC
Respondent: Domestic Products CJSC
Keywords: "Madame Moo"
Trademarks: the claimant belongs to the TK "Madam Mu" according to certificate No. 346933
Court decision : the claim is denied
The lawsuit was filed due to the fact that, according to the claimant, the defendant used the claimant’s trademark Madame Mu as the keywords of the same name for “searching for access to the defendant’s Internet site vse-svoe”. In addition, the plaintiff also referred to the fact that the defendant’s site offered goods that were homogeneous to those in whose classes his trademark was registered. Thus, the plaintiff believed that such use violated its exclusive rights to the specified trademark.
When considering the case, the court came to the conclusion that the keyword does not allow to accurately determine any advertisement, person or product. This circumstance, as well as the lack of the ability of the keywords to individualize, is confirmed, among other things, by the evidence presented by the plaintiff - notarial examination protocols. After the introduction of the key word “Madame Mu”, search engines produced a search result - a list of possible resources, including those not related to the respondent’s activities.
Thus, the court concluded that the indication of the claimant’s trademark as a keyword was not the use of a trademark within the meaning of Art. 1484 of the Civil Code of the Russian Federation, and also was not a special case of such use - otherwise by addressing on the Internet.
Note: The higher authority (9th AAS) left the decision of the first instance unchanged. LLC “KM-Elite” was filed a cassation appeal, therefore at the moment the case is under consideration by the Court of Intellectual Property Rights.
Date of decision: 04/26/2013
Link to the solution: sudact.ru/arbitral/doc/PJpFISiSDKVQ
Plaintiff: Advanced Processing Technologies LLC
Respondent: Terradek LLC
Keywords : "newwood"
Trademarks : the claimant belongs to the TZ “Newwood” according to certificate No. 462705 valid for 22.10.20, according to certificate No. 462706 valid to 22.10.20
Court decision: the claim is denied
The plaintiff is the copyright holder of the Neewood TK. In support of his claim, the plaintiff argued that when the newwood query was entered into the Yandex search system, links to a number of resources appeared, in particular, the defendant’s website www.terradeck.ru . According to the plaintiff, the respondent’s use of the keyword to search for “newwood” violated his exclusive right to the trademark “newwood”.
The court ruled that using a phrase similar to a registered word trademark as a keyword for searching on the Internet cannot be equated with the use of a trademark.
Each method of using a trademark in the sense of Art.1484 of the Civil Code of the Russian Federation is limited by a single principle of such use: the implementation of the use of a trademark for the purpose of individualization of goods, i.e. giving distinctiveness to the product or manufacturer in order to prevent the mixing of goods.
The keyword is a technical parameter defined by the advertiser, which indicates this parameter by means of the corresponding setting tools in online advertising systems. A number of keywords can be selected for each ad. At the same time, keywords for searching for information from different advertisers may coincide. The user is not informed of the keywords for which he can get access to the information he is interested in. Therefore, when entering a keyword, the user receives a series of links to possible resources for which the corresponding keyword has been selected.
Therefore, key words can not be attributed to the use of a trademark, given the lack of individualizing ability. The main feature for which trademark protection is granted when using keywords to search the Internet is absent.
Thus, the indication of a designation similar to the degree of confusion with the claimant’s trademark as a keyword cannot be recognized as use in the sense of art. 1484 of the Civil Code of the Russian Federation, as it does not individualize any goods, or the advertiser itself; does not create the possibility of mixing the goods of the plaintiff and the advertiser; is one of the technical criteria for displaying an ad in a search engine.
Specifying a trademark as a keyword is not its use in the form of another way of addressing on the Internet. This conclusion follows from the direct correlation of the general rule of art. 1484 of the Civil Code of the Russian Federation with the method of use in the form of addressing.
Note: The higher authority (9th AAS) left the decision of the first instance unchanged. LLC "Advanced Processing Technologies" was filed a cassation complaint, therefore, at the moment the case is under consideration by the Court of Intellectual Property Rights.
In Russia as a whole, it can be said that judicial practice on such disputes is still relatively small, partly therefore in the texts of judicial decisions there are identical formulations regarding the explanations of the nature and function of keywords, as well as the presence of a unified position that the use of trademarks in as keywords in advertisements does not fall under the use of trademarks in the sense of Article 1484 of the Civil Code of the Russian Federation.
Further, I suggest to get acquainted with how such matters are in other countries and courts.
Date of decision: September 22, 2011
Link to solution: curia.europa.eu/juris/document/document.jsf;jsessionid=9ea7d0f130d5cd0e63c6637446fdb161c5933cfc2a4b.e34KaxiLc3eQc40LaxqMbN4OahqSe0?text=&docid=109942&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=168339
Plaintiff: Interflora Inc., Interflora British Unit
Defendant: Marks & Spencer plc, Flowers Direct Online Ltd
Keywords: “Interflora Flowers”, “Interflora Delivery”, “Interflora.com”, “interflora co uk”, etc.
Trademarks: the claimant belongs to the TF INTERFLORA
Court decision: the defendant violated the rights of the claimant to the trademark belonging to him
The plaintiff is a large network for the order and delivery of flowers, which owns the eponymous trademark. Respondent is a well-known retail chain in the UK with a wide range of products, which provides its services through its own outlets and online. The respondent used the word "Interflora" for sponsored links in the AdWords advertising system for its own floristic online service. Sponsored links quietly used the word “Interflora”, which, as stated above, is the trademark of the plaintiff.
In this case, the court ruled that the keyword is by its nature not an advertisement or always an undesirable phenomenon in relation to the trademark of the same name. At the same time, in this case the violation of the claimant’s rights was because the defendant did not provide a reasonable number of well-informed and observant users with information that the defendant’s flower delivery service was not part of the similar service of the claimant.
The court concluded that:
1. A well-informed and observant user, as a rule, did not realize in May 2008 (and at the time of consideration of the case in court) that the service of the defendant in delivering flowers was not part of the similar service of the plaintiff.
2. None of the defendant’s advertisements contained information that the respondent’s service is not part of the similar service of the claimant.
3. The essence of the claimant’s service, which allows the users of the service to trade under their own names, made it even more likely that the respondent’s service was linked to the claimant’s service.
Therefore, the court ruled that the respondent’s use as the advertiser of the claimant’s trademark as a keyword to advertise his own services is the use of the claimant’s trademark in relation to his own products and services.
Date of decision: 23.03.2010
Reference to curioso
Plaintiff: Google France SARL, Google Inc.
Respondents: Louis Vuitton Malletier SA, Viaticum SA, Luteciel SARL, CNRRH Pierre Alexis Thonet Bruno Raboin Tiger, a franchisee of Unicis
Keywords: words belonging to the respondent (in particular, “Louis Vuitton”, “LV”), as well as the phrase “imitation”, “replica” and “copy” with them
Trademarks: Louis Vuitton, LV
Court decision: 1) the trademark holder has the right to prohibit the use of his trademark as a keyword for advertising purposes, 2) the advertising link service provider (in particular, Google) is not responsible for storing and displaying advertisements for keywords in the meaning of Art. 5 (1) and (2) Trademark Directives (the Trade Marks Directive) and Art. 9 (1) of EU Council Regulation No. 207/209, 3) the provider of advertising link services (in particular, Google) is not in any case recognized as responsible for the hosting clause of art. 14 of the Directive 2000/31 / EC (the E-commerce Directive), if he does not play an active role that he may have as a result of knowledge or control of the data that he has stored.
In early 2003, Louis Vuitton learned that the Google search engine displays links to its users under the heading “Sponsored links” to sites that sell imitations of Louis Vuitton products. It has been found that Google allows its advertisers to use as keywords not only words that are Louis Vuitton trademarks, but also phrases that include Louis Vuitton trademarks and words such as imitation and copy.
In this regard, the company Louis Vuitton filed a lawsuit against Google about the fact that Google violates the plaintiff’s rights to its own trademarks. Google was found guilty by a regional court in Paris for violating trademark rights of Louis Vuitton. The Paris Court of Appeal upheld the decision of the court of first instance. Google has filed a cassation appeal against the court decision. In this regard, the Court of Cassation of France decided to suspend the proceedings and sent the questions of law to the European Court for consideration of the case.
The court ruled that when a third person uses a mark that is identical or similar to a trademark of any rightholder, it is assumed at least that this third party uses this mark in its own commercial communications. The specified service provider (meaning Google) allows its customers, namely advertisers, to use signs that are identical or similar to the trademarks, but at the same time he does not use these signs.
The court also ruled that courts dealing with such cases should find out whether the role of the service provider is neutral or not (meaning, whether its actions in such cases are mostly technical, automatic and passive measures indicating its lack of knowledge, and also control the data it stores).
If it is proved that the provider did not play any active role, therefore, he cannot be held accountable for the data he stores at the request of the advertiser, until he becomes aware of the illegality of the data itself or the actions of the advertiser and if he will not promptly delete such data or make it inaccessible.
Date of decision: 01/29/2013
Link to solution: www.legifrance.gouv.fr/affichJuriJudi.do?oldAction=rechJuriJudi&idTexte=JURITEXT000027024140&fastReqId=405377599&fastPos=1
Plaintiff: Cobrason
Responders: Google Inc., Google France, Solutions
Keywords: "Cobrason"
Trademarks: the claimant owns the trademark “Cobrason”
Court decision: to refuse to satisfy the claimant’s claims
The plaintiff and the defendant are online services for the sale of video and Hi-Fi equipment, being direct competitors to each other. The claimant owns the Cobrason trademark. In his lawsuit, the plaintiff indicated that when searching the word “cobrason” in the www.google.fr search engine, as a result of the search results, an advertising link to the respondent’s website appears, which is displayed as text: “Why pay more?”. That is why the plaintiff sued Google Inc., Google France and Solutions, which, in his opinion, carried out unfair competition and showed misleading advertising to consumers using the Adwords service.
In the course of judicial review of this case on May 11, 2011, the Paris Appeals Court of Google France was excluded from the list of respondents. The remaining two co-defendants were accepted by the court as responsible for unfair competition and misleading advertising, and awarded EUR 100,000 in damages to the plaintiff.
However, in its decision of January 23, 2013, the Supreme Court of France overturned the decision of the Court of Appeal of Paris for three reasons.
1. The position of the court order, according to which Google Inc. technically contributed to the unfair competition acts committed by Solutions. According to the findings of the French Supreme Court, the Paris Court of Appeal should have taken into account the argument that Google Inc. was to be subject to the limited liability regime of hosting service providers, as defined in Article 6-I-2 of the Act of 21 June 2004 on Confidentiality in the Digital Economy (LCEN). Thus, the French Supreme Court ruled in accordance with the interpretation adopted by the European Court of Justice on March 23, 2010 in the AdWords case (C-236/08 C-238/08, Google Inc., Google France vs. Louis Vuitton Malletier, etc. ).
2. In order to establish unfair competition, the French Supreme Court ruled that the Court of Appeal of Paris had to establish the risk of confusion between the sites of the claimant and the defendant. By doing so, the French Supreme Court implicitly confirmed that the fact that Solutions had used the claimant’s trademark as the keyword was not in itself sufficient reason to recognize the defendant’s actions as an act of unfair conference. Unfair competition does not arise until there is a risk of misleading the average Internet user. In addition, the French Supreme Court noted that imposing one’s own services on a competitor’s customers is not in itself an offense until such unfair behavior is established.
3. Also, the French Supreme Court ruled that neither the display of the respondent’s link to his site, nor the message with the text: “Why pay more?” Are not sufficient to establish misleading advertising or the risk of confusion for the average Internet user regarding the two companies regardless of whether they are connected by economic ties or not.
Therefore, the decision on the case was taken by the court in favor of the defendants. Thus, the decision of the French Supreme Court clearly corresponds to the interpretations made by the Court of Justice of the European Union, which promote competition. If it is now clear that a company has the right to use a competitor’s trademark as a keyword in advertising link services, at the same time, it should be remembered that in this matter one must be extremely careful to avoid misleading the average Internet user.
Date of decision: 09/04/2012
Link to the solution: www.ca4.uscourts.gov/opinions/Published/102007.p.pdf
Plaintiff: Rosetta Stone Ltd.
Responders: Google Inc.
Keywords: ROSETTA STONE
Trademarks: Claimant owns ROSETTA STONE, ROSETTA STONE LANGUAGE LEARNING SUCCESS, ROSETTASTONE.COM and ROSETTA WORLD trademarks.
Court decision: cancel the previous court decision and return the case for a new consideration
The plaintiff is a manufacturer of language learning software. The lawsuit was filed in 2005 against the respondent about the fact that his AdWords service allowed third parties to use the claimant’s trademarks 1) as keywords in advertisements, 2) in the form of headers and texts of advertisements on the respondent’s website to mislead consumers and also thereby allowed third parties to appropriate the claimant’s trademarks.
The Virginia District Court in 2009 decided that the use of a trademark by a third party was not misleading consumers. The plaintiff filed an appeal, and the case was considered by the Court of Appeal of the Fourth Circuit. The court reviewed the lower court's decision on three grounds of claim by Rosetta Stone Ltd. - in relation to direct infringement, facilitation of infringement, weakening of a trademark (i.e. use of a trademark in such a way that its identification function is weakened - when a trademark ceases to be unambiguously associated with a specific manufacturer) .
1. Direct violation - the Court took into account the complainant’s statement that the respondent provided its users with promotional links to the counterfeit copies of the plaintiff’s software, while they themselves believed that such links lead to the official resellers ’sites, and thus acquire legal products.
The court also took into account the fact that according to Google’s internal research conducted by its specialists before 2004, it was found that “the risk of such confusion is very high” when a trademark is used in the title or content of an advertising link, and because of this practice 94% of users have been misled at least once. Moreover, evidence was presented that two Google employees were unable to determine (without further research) which advertising links on the search results page lead precisely to the websites of the official reseller of the plaintiff, which reflected the uncertainty regarding the legality of the products offered by such advertising links.
2. Facilitating the violation - The Court determined that the complainant’s complaint regarding the facilitation of the violation (which is one person’s awareness that his actions contribute to the commission of an unlawful act by a third party) on the part of the defendant continues to be justified, since according to the claimant’s evidence the defendant , realizing, continued to sell keywords to violators and distributors of counterfeit products.
3. Weakening of the trademark - on this issue, the court rejected the claimant’s statement that the defendant, using the claimant’s trademark, thereby weakens its identification function. The Court of Appeal confirmed that the defendant did not use the claimant’s trademark to identify his own services. Moreover, the claimant’s allegation of the weakening of his trademark was rejected by the court due to the fact that the public’s awareness of the claimant’s trademark increased after it appeared in the Adwords respondent system.
Thus, the Court decided to annul the decision of the previous court and send it for a new consideration.
Note: however, in November 2012, the parties entered into a settlement agreement, thereby terminating the three-year judicial proceedings. Details of the settlement agreement were not disclosed. In a joint announcement of this news, the parties noted that they were able to agree on the termination of legal proceedings and plan to cooperate in combating advertising links regarding counterfeit products and preventing the misuse and abuse of trademarks on the Internet.
Date of decision: 08.03.2011
Reference to the decision: cdn.ca9.uscourts.gov/datastore/opinions/2011/03/08/10-55840.pdf
Plaintiff: Network Automation, Inc.
Responders: Advanced Systems Concepts, Inc.
Keywords: ActiveBatch
Trademarks: the claimant owns the trademark "AutoMate", the respondent - "ActiveBatch"
Court decision: repeal the injunction issued by the court of first instance
The plaintiff and the defendant are software makers. Network Automation has decided to advertise its products to use the word “ActiveBatch” as a keyword for sponsored links. Advanced Systems Concepts protested against this use, which initiated this litigation.
As a result of the decision of the claimant, in the top of the search results by relevant request by the word "AutoMate" there were links to the website of the claimant. In 2009, the defendant sent the plaintiff a written warning about the inadmissibility of the continuation of such a violation. The defendant made his second letter to the plaintiff that, in his opinion, the latter’s actions are a violation of the defendant’s rights to the trademark. The defendant threatened a lawsuit, to which the claimant stated that his actions were not a specified violation, and therefore filed a lawsuit for the court to confirm that the defendant’s rights were not violated by those actions of the claimant (this is why Network Automation appears as a claimant, and Advanced Systems Concepts as a defendant) , and the defendant, in turn, filed a counterclaim for violation of his rights.
The court of first instance imposed an injunction on the actions of the plaintiff. The court also noted that the plaintiff used an identical sign to advertise and sell its products, which are competitive with the defendant’s products, and both companies use the Internet as a channel to distribute their products. Because the sponsored links did not give a clear answer about which site they lead to, consumers could be misled.
The plaintiff appealed against the injunction. The Court of Appeal of the Ninth Circuit overturned the decision of the court of first instance when reviewing the case. The court ruled that any consumer who searches for the word “ActiveBatch” expects to receive a specific product as a result of the search, and not a category of goods. The court also ruled that the court of first instance took into account only the fact that the products of the parties to the claim are interchangeable, but did not take into account the fact that both parties are direct competitors. The court confirmed that the claimant’s “ActiveBatch” keyword and the defendant’s trademark of the same name are identical. In addition, the court noted that consumers of expensive software are likely to understand the content of search results and sponsored links, and thus there is a low probability that they can be misled. The court decided that the court of first instance made an erroneous conclusion: since the parties to the lawsuit are competitors, the plaintiff tried not to mislead consumers, but to inform them of other options for similar products.
As a result, the court ruled in favor of the claimant, repealing the injunction adopted by the court of first instance.
Date of decision: 06.02.2013
Solution link: docs.google.com/viewer?docex=1&url=http : //www.hcourt.gov.au/assets/publications/judgment-summaries/2013/Google_v_ACCC_PR_-_Final.pdf
www.austlii.edu.au/au/cases/cth/HCA/2013/1.html
Plaintiff: Google Inc.
Respondents: Australian Competition and Consumer Commission (ACCC)
Keywords: “Harvey World Travel”, “Harvey World”, “honda.com.au”, “just 4x4s magazine”
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Russia
1. LLC MEGA GROUP vs LLC PS ELEKTRIK
Date of decision: 13.12.2012
Link to the solution: http://sudact.ru/arbitral/doc/ZgKbUOdWKhJx/?page=11
Plaintiff: MEGA GROUP Ltd.
Respondent: LLC PS ELEKTRIK
Keywords: "Kontaktika"
Trademarks: the claimant belongs to the TK "CONTACTICA CONTACT" according to certificate â„–341280
Court decision: the claim is denied
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The lawsuit was filed due to the fact that the respondent, according to the plaintiff, illegally uses his registered trademark on the Internet under the domain name www.pc-electric.ru , and also uses it as a keyword for his ads in the Yandex advertising service. Direct.
The court concluded that the indication of a trademark as a keyword in the Yandex.Direct service is not a use of a trademark for the following reasons.
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 can be seen from the case materials, it is such an indication of a trademark without pursuing the goal of individualization of goods carried out by advertisers in the Yandex.Direct service, for technical purposes, and cannot lead to the mixing of goods (services).
Therefore, keywords in the Yandex.Direct service cannot have the individualizing ability with respect to any goods, services or persons.
Thus, the indication of a designation similar to the degree of confusion with the claimant’s trademark as a keyword cannot be recognized by the court as being used in the sense of art. 1484 of the Civil Code of the Russian Federation, as it does not individualize any goods, or the advertiser itself; does not create the possibility of mixing the goods of the plaintiff and the advertiser; is one of the technical criteria for displaying an ad in the Yandex.Direct service.
In addition, the plaintiff did not prove that PS ELEKTRIK LLC is the appropriate defendant in the case, the person who placed the claimant’s trademark as keywords in the Yandex.Direct Service. The plaintiff has not submitted any evidence confirming that the placement of advertising materials indicating the trademark as a keyword in the Yandex.Direct Service was performed by the respondent.
Note: The first trial in this case was in 2011, when the court of first instance recognized the actions of the defendant as violations of the plaintiff’s rights. The Court of Appeal overturned the decision of the court of first instance, and refused to satisfy the claim. The court of cassation instance reversed the previous decision and decision and sent the case for a new consideration, which took place on 13.12.2012 and the text of the decision of which is already set forth above.
2. LLC “KM-Elite” vs CJSC “Home Products”
Date of decision: 04/09/2013
Link to the solution: sudact.ru/arbitral/doc/FVEkD1mRV9Vr
Plaintiff: KM-Elite LLC
Respondent: Domestic Products CJSC
Keywords: "Madame Moo"
Trademarks: the claimant belongs to the TK "Madam Mu" according to certificate No. 346933
Court decision : the claim is denied
The lawsuit was filed due to the fact that, according to the claimant, the defendant used the claimant’s trademark Madame Mu as the keywords of the same name for “searching for access to the defendant’s Internet site vse-svoe”. In addition, the plaintiff also referred to the fact that the defendant’s site offered goods that were homogeneous to those in whose classes his trademark was registered. Thus, the plaintiff believed that such use violated its exclusive rights to the specified trademark.
When considering the case, the court came to the conclusion that the keyword does not allow to accurately determine any advertisement, person or product. This circumstance, as well as the lack of the ability of the keywords to individualize, is confirmed, among other things, by the evidence presented by the plaintiff - notarial examination protocols. After the introduction of the key word “Madame Mu”, search engines produced a search result - a list of possible resources, including those not related to the respondent’s activities.
Thus, the court concluded that the indication of the claimant’s trademark as a keyword was not the use of a trademark within the meaning of Art. 1484 of the Civil Code of the Russian Federation, and also was not a special case of such use - otherwise by addressing on the Internet.
Note: The higher authority (9th AAS) left the decision of the first instance unchanged. LLC “KM-Elite” was filed a cassation appeal, therefore at the moment the case is under consideration by the Court of Intellectual Property Rights.
3. LLC “Advanced Processing Technologies” vs LLC “Terradek”
Date of decision: 04/26/2013
Link to the solution: sudact.ru/arbitral/doc/PJpFISiSDKVQ
Plaintiff: Advanced Processing Technologies LLC
Respondent: Terradek LLC
Keywords : "newwood"
Trademarks : the claimant belongs to the TZ “Newwood” according to certificate No. 462705 valid for 22.10.20, according to certificate No. 462706 valid to 22.10.20
Court decision: the claim is denied
The plaintiff is the copyright holder of the Neewood TK. In support of his claim, the plaintiff argued that when the newwood query was entered into the Yandex search system, links to a number of resources appeared, in particular, the defendant’s website www.terradeck.ru . According to the plaintiff, the respondent’s use of the keyword to search for “newwood” violated his exclusive right to the trademark “newwood”.
The court ruled that using a phrase similar to a registered word trademark as a keyword for searching on the Internet cannot be equated with the use of a trademark.
Each method of using a trademark in the sense of Art.1484 of the Civil Code of the Russian Federation is limited by a single principle of such use: the implementation of the use of a trademark for the purpose of individualization of goods, i.e. giving distinctiveness to the product or manufacturer in order to prevent the mixing of goods.
The keyword is a technical parameter defined by the advertiser, which indicates this parameter by means of the corresponding setting tools in online advertising systems. A number of keywords can be selected for each ad. At the same time, keywords for searching for information from different advertisers may coincide. The user is not informed of the keywords for which he can get access to the information he is interested in. Therefore, when entering a keyword, the user receives a series of links to possible resources for which the corresponding keyword has been selected.
Therefore, key words can not be attributed to the use of a trademark, given the lack of individualizing ability. The main feature for which trademark protection is granted when using keywords to search the Internet is absent.
Thus, the indication of a designation similar to the degree of confusion with the claimant’s trademark as a keyword cannot be recognized as use in the sense of art. 1484 of the Civil Code of the Russian Federation, as it does not individualize any goods, or the advertiser itself; does not create the possibility of mixing the goods of the plaintiff and the advertiser; is one of the technical criteria for displaying an ad in a search engine.
Specifying a trademark as a keyword is not its use in the form of another way of addressing on the Internet. This conclusion follows from the direct correlation of the general rule of art. 1484 of the Civil Code of the Russian Federation with the method of use in the form of addressing.
Note: The higher authority (9th AAS) left the decision of the first instance unchanged. LLC "Advanced Processing Technologies" was filed a cassation complaint, therefore, at the moment the case is under consideration by the Court of Intellectual Property Rights.
In Russia as a whole, it can be said that judicial practice on such disputes is still relatively small, partly therefore in the texts of judicial decisions there are identical formulations regarding the explanations of the nature and function of keywords, as well as the presence of a unified position that the use of trademarks in as keywords in advertisements does not fall under the use of trademarks in the sense of Article 1484 of the Civil Code of the Russian Federation.
Further, I suggest to get acquainted with how such matters are in other countries and courts.
Great Britain
4. Interflora Inc. vs Marks & Spencer plc
Date of decision: September 22, 2011
Link to solution: curia.europa.eu/juris/document/document.jsf;jsessionid=9ea7d0f130d5cd0e63c6637446fdb161c5933cfc2a4b.e34KaxiLc3eQc40LaxqMbN4OahqSe0?text=&docid=109942&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=168339
Plaintiff: Interflora Inc., Interflora British Unit
Defendant: Marks & Spencer plc, Flowers Direct Online Ltd
Keywords: “Interflora Flowers”, “Interflora Delivery”, “Interflora.com”, “interflora co uk”, etc.
Trademarks: the claimant belongs to the TF INTERFLORA
Court decision: the defendant violated the rights of the claimant to the trademark belonging to him
The plaintiff is a large network for the order and delivery of flowers, which owns the eponymous trademark. Respondent is a well-known retail chain in the UK with a wide range of products, which provides its services through its own outlets and online. The respondent used the word "Interflora" for sponsored links in the AdWords advertising system for its own floristic online service. Sponsored links quietly used the word “Interflora”, which, as stated above, is the trademark of the plaintiff.
In this case, the court ruled that the keyword is by its nature not an advertisement or always an undesirable phenomenon in relation to the trademark of the same name. At the same time, in this case the violation of the claimant’s rights was because the defendant did not provide a reasonable number of well-informed and observant users with information that the defendant’s flower delivery service was not part of the similar service of the claimant.
The court concluded that:
1. A well-informed and observant user, as a rule, did not realize in May 2008 (and at the time of consideration of the case in court) that the service of the defendant in delivering flowers was not part of the similar service of the plaintiff.
2. None of the defendant’s advertisements contained information that the respondent’s service is not part of the similar service of the claimant.
3. The essence of the claimant’s service, which allows the users of the service to trade under their own names, made it even more likely that the respondent’s service was linked to the claimant’s service.
Therefore, the court ruled that the respondent’s use as the advertiser of the claimant’s trademark as a keyword to advertise his own services is the use of the claimant’s trademark in relation to his own products and services.
France
5. Google Inc. vs Louis Vuitton Malletier SA
Date of decision: 23.03.2010
Reference to curioso
Plaintiff: Google France SARL, Google Inc.
Respondents: Louis Vuitton Malletier SA, Viaticum SA, Luteciel SARL, CNRRH Pierre Alexis Thonet Bruno Raboin Tiger, a franchisee of Unicis
Keywords: words belonging to the respondent (in particular, “Louis Vuitton”, “LV”), as well as the phrase “imitation”, “replica” and “copy” with them
Trademarks: Louis Vuitton, LV
Court decision: 1) the trademark holder has the right to prohibit the use of his trademark as a keyword for advertising purposes, 2) the advertising link service provider (in particular, Google) is not responsible for storing and displaying advertisements for keywords in the meaning of Art. 5 (1) and (2) Trademark Directives (the Trade Marks Directive) and Art. 9 (1) of EU Council Regulation No. 207/209, 3) the provider of advertising link services (in particular, Google) is not in any case recognized as responsible for the hosting clause of art. 14 of the Directive 2000/31 / EC (the E-commerce Directive), if he does not play an active role that he may have as a result of knowledge or control of the data that he has stored.
In early 2003, Louis Vuitton learned that the Google search engine displays links to its users under the heading “Sponsored links” to sites that sell imitations of Louis Vuitton products. It has been found that Google allows its advertisers to use as keywords not only words that are Louis Vuitton trademarks, but also phrases that include Louis Vuitton trademarks and words such as imitation and copy.
In this regard, the company Louis Vuitton filed a lawsuit against Google about the fact that Google violates the plaintiff’s rights to its own trademarks. Google was found guilty by a regional court in Paris for violating trademark rights of Louis Vuitton. The Paris Court of Appeal upheld the decision of the court of first instance. Google has filed a cassation appeal against the court decision. In this regard, the Court of Cassation of France decided to suspend the proceedings and sent the questions of law to the European Court for consideration of the case.
The court ruled that when a third person uses a mark that is identical or similar to a trademark of any rightholder, it is assumed at least that this third party uses this mark in its own commercial communications. The specified service provider (meaning Google) allows its customers, namely advertisers, to use signs that are identical or similar to the trademarks, but at the same time he does not use these signs.
The court also ruled that courts dealing with such cases should find out whether the role of the service provider is neutral or not (meaning, whether its actions in such cases are mostly technical, automatic and passive measures indicating its lack of knowledge, and also control the data it stores).
If it is proved that the provider did not play any active role, therefore, he cannot be held accountable for the data he stores at the request of the advertiser, until he becomes aware of the illegality of the data itself or the actions of the advertiser and if he will not promptly delete such data or make it inaccessible.
6. Cobrason vs Google Inc., Google France, Solutions
Date of decision: 01/29/2013
Link to solution: www.legifrance.gouv.fr/affichJuriJudi.do?oldAction=rechJuriJudi&idTexte=JURITEXT000027024140&fastReqId=405377599&fastPos=1
Plaintiff: Cobrason
Responders: Google Inc., Google France, Solutions
Keywords: "Cobrason"
Trademarks: the claimant owns the trademark “Cobrason”
Court decision: to refuse to satisfy the claimant’s claims
The plaintiff and the defendant are online services for the sale of video and Hi-Fi equipment, being direct competitors to each other. The claimant owns the Cobrason trademark. In his lawsuit, the plaintiff indicated that when searching the word “cobrason” in the www.google.fr search engine, as a result of the search results, an advertising link to the respondent’s website appears, which is displayed as text: “Why pay more?”. That is why the plaintiff sued Google Inc., Google France and Solutions, which, in his opinion, carried out unfair competition and showed misleading advertising to consumers using the Adwords service.
In the course of judicial review of this case on May 11, 2011, the Paris Appeals Court of Google France was excluded from the list of respondents. The remaining two co-defendants were accepted by the court as responsible for unfair competition and misleading advertising, and awarded EUR 100,000 in damages to the plaintiff.
However, in its decision of January 23, 2013, the Supreme Court of France overturned the decision of the Court of Appeal of Paris for three reasons.
1. The position of the court order, according to which Google Inc. technically contributed to the unfair competition acts committed by Solutions. According to the findings of the French Supreme Court, the Paris Court of Appeal should have taken into account the argument that Google Inc. was to be subject to the limited liability regime of hosting service providers, as defined in Article 6-I-2 of the Act of 21 June 2004 on Confidentiality in the Digital Economy (LCEN). Thus, the French Supreme Court ruled in accordance with the interpretation adopted by the European Court of Justice on March 23, 2010 in the AdWords case (C-236/08 C-238/08, Google Inc., Google France vs. Louis Vuitton Malletier, etc. ).
2. In order to establish unfair competition, the French Supreme Court ruled that the Court of Appeal of Paris had to establish the risk of confusion between the sites of the claimant and the defendant. By doing so, the French Supreme Court implicitly confirmed that the fact that Solutions had used the claimant’s trademark as the keyword was not in itself sufficient reason to recognize the defendant’s actions as an act of unfair conference. Unfair competition does not arise until there is a risk of misleading the average Internet user. In addition, the French Supreme Court noted that imposing one’s own services on a competitor’s customers is not in itself an offense until such unfair behavior is established.
3. Also, the French Supreme Court ruled that neither the display of the respondent’s link to his site, nor the message with the text: “Why pay more?” Are not sufficient to establish misleading advertising or the risk of confusion for the average Internet user regarding the two companies regardless of whether they are connected by economic ties or not.
Therefore, the decision on the case was taken by the court in favor of the defendants. Thus, the decision of the French Supreme Court clearly corresponds to the interpretations made by the Court of Justice of the European Union, which promote competition. If it is now clear that a company has the right to use a competitor’s trademark as a keyword in advertising link services, at the same time, it should be remembered that in this matter one must be extremely careful to avoid misleading the average Internet user.
USA
7. Rosetta Stone Ltd. vs Google Inc.
Date of decision: 09/04/2012
Link to the solution: www.ca4.uscourts.gov/opinions/Published/102007.p.pdf
Plaintiff: Rosetta Stone Ltd.
Responders: Google Inc.
Keywords: ROSETTA STONE
Trademarks: Claimant owns ROSETTA STONE, ROSETTA STONE LANGUAGE LEARNING SUCCESS, ROSETTASTONE.COM and ROSETTA WORLD trademarks.
Court decision: cancel the previous court decision and return the case for a new consideration
The plaintiff is a manufacturer of language learning software. The lawsuit was filed in 2005 against the respondent about the fact that his AdWords service allowed third parties to use the claimant’s trademarks 1) as keywords in advertisements, 2) in the form of headers and texts of advertisements on the respondent’s website to mislead consumers and also thereby allowed third parties to appropriate the claimant’s trademarks.
The Virginia District Court in 2009 decided that the use of a trademark by a third party was not misleading consumers. The plaintiff filed an appeal, and the case was considered by the Court of Appeal of the Fourth Circuit. The court reviewed the lower court's decision on three grounds of claim by Rosetta Stone Ltd. - in relation to direct infringement, facilitation of infringement, weakening of a trademark (i.e. use of a trademark in such a way that its identification function is weakened - when a trademark ceases to be unambiguously associated with a specific manufacturer) .
1. Direct violation - the Court took into account the complainant’s statement that the respondent provided its users with promotional links to the counterfeit copies of the plaintiff’s software, while they themselves believed that such links lead to the official resellers ’sites, and thus acquire legal products.
The court also took into account the fact that according to Google’s internal research conducted by its specialists before 2004, it was found that “the risk of such confusion is very high” when a trademark is used in the title or content of an advertising link, and because of this practice 94% of users have been misled at least once. Moreover, evidence was presented that two Google employees were unable to determine (without further research) which advertising links on the search results page lead precisely to the websites of the official reseller of the plaintiff, which reflected the uncertainty regarding the legality of the products offered by such advertising links.
2. Facilitating the violation - The Court determined that the complainant’s complaint regarding the facilitation of the violation (which is one person’s awareness that his actions contribute to the commission of an unlawful act by a third party) on the part of the defendant continues to be justified, since according to the claimant’s evidence the defendant , realizing, continued to sell keywords to violators and distributors of counterfeit products.
3. Weakening of the trademark - on this issue, the court rejected the claimant’s statement that the defendant, using the claimant’s trademark, thereby weakens its identification function. The Court of Appeal confirmed that the defendant did not use the claimant’s trademark to identify his own services. Moreover, the claimant’s allegation of the weakening of his trademark was rejected by the court due to the fact that the public’s awareness of the claimant’s trademark increased after it appeared in the Adwords respondent system.
Thus, the Court decided to annul the decision of the previous court and send it for a new consideration.
Note: however, in November 2012, the parties entered into a settlement agreement, thereby terminating the three-year judicial proceedings. Details of the settlement agreement were not disclosed. In a joint announcement of this news, the parties noted that they were able to agree on the termination of legal proceedings and plan to cooperate in combating advertising links regarding counterfeit products and preventing the misuse and abuse of trademarks on the Internet.
8. Network Automation, Inc. vs Advanced Systems Concepts, Inc.
Date of decision: 08.03.2011
Reference to the decision: cdn.ca9.uscourts.gov/datastore/opinions/2011/03/08/10-55840.pdf
Plaintiff: Network Automation, Inc.
Responders: Advanced Systems Concepts, Inc.
Keywords: ActiveBatch
Trademarks: the claimant owns the trademark "AutoMate", the respondent - "ActiveBatch"
Court decision: repeal the injunction issued by the court of first instance
The plaintiff and the defendant are software makers. Network Automation has decided to advertise its products to use the word “ActiveBatch” as a keyword for sponsored links. Advanced Systems Concepts protested against this use, which initiated this litigation.
As a result of the decision of the claimant, in the top of the search results by relevant request by the word "AutoMate" there were links to the website of the claimant. In 2009, the defendant sent the plaintiff a written warning about the inadmissibility of the continuation of such a violation. The defendant made his second letter to the plaintiff that, in his opinion, the latter’s actions are a violation of the defendant’s rights to the trademark. The defendant threatened a lawsuit, to which the claimant stated that his actions were not a specified violation, and therefore filed a lawsuit for the court to confirm that the defendant’s rights were not violated by those actions of the claimant (this is why Network Automation appears as a claimant, and Advanced Systems Concepts as a defendant) , and the defendant, in turn, filed a counterclaim for violation of his rights.
The court of first instance imposed an injunction on the actions of the plaintiff. The court also noted that the plaintiff used an identical sign to advertise and sell its products, which are competitive with the defendant’s products, and both companies use the Internet as a channel to distribute their products. Because the sponsored links did not give a clear answer about which site they lead to, consumers could be misled.
The plaintiff appealed against the injunction. The Court of Appeal of the Ninth Circuit overturned the decision of the court of first instance when reviewing the case. The court ruled that any consumer who searches for the word “ActiveBatch” expects to receive a specific product as a result of the search, and not a category of goods. The court also ruled that the court of first instance took into account only the fact that the products of the parties to the claim are interchangeable, but did not take into account the fact that both parties are direct competitors. The court confirmed that the claimant’s “ActiveBatch” keyword and the defendant’s trademark of the same name are identical. In addition, the court noted that consumers of expensive software are likely to understand the content of search results and sponsored links, and thus there is a low probability that they can be misled. The court decided that the court of first instance made an erroneous conclusion: since the parties to the lawsuit are competitors, the plaintiff tried not to mislead consumers, but to inform them of other options for similar products.
As a result, the court ruled in favor of the claimant, repealing the injunction adopted by the court of first instance.
Australia
9. Google Inc. vs ACCC
Date of decision: 06.02.2013
Solution link: docs.google.com/viewer?docex=1&url=http : //www.hcourt.gov.au/assets/publications/judgment-summaries/2013/Google_v_ACCC_PR_-_Final.pdf
www.austlii.edu.au/au/cases/cth/HCA/2013/1.html
Plaintiff: Google Inc.
Respondents: Australian Competition and Consumer Commission (ACCC)
Keywords: “Harvey World Travel”, “Harvey World”, “honda.com.au”, “just 4x4s magazine”
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Source: https://habr.com/ru/post/284864/
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