Court rules on use of third-party trademarks as AdWords

The Barcelona Commercial Court Number 2 has dismissed a lawsuit filed by Fotoprix SA against Vistaprint España SL for infringement of the trademarks FOTOLIBRO and FOTOPRIX and for unfair competition, and has upheld Vistaprint’s counterclaim for a declaration of partial invalidity and partial cancellation of the trademark FOTOLIBRO.

The background of the case is as follows.

Fotoprix filed a claim against Vistaprint for trademarks infringement and unfair competition for using its registered trademarks FOTOLIBRO and FOTOPRIX as AdWords in internet search engines. Fotoprix also alleged that Vistaprint used the trademark FOTOLIBRO on photobooks and related services.

Vistaprint filed a counterclaim requesting a declaration of:

• partial invalidity of Fotoprix’s FOTOLIBRO mark, on the ground that it is descriptive of some of the products and services covered by the mark, in particular photobooks and other related products and services; and

• partial cancellation of the FOTOLIBRO mark for lack of use with regard to those products and services not affected by the action for partial invalidity.

The court upheld Vistaprint’s counterclaim and granted a declaration for partial invalidity and partial cancellation of the FOTOLIBRO mark.

With regard to the partial invalidity action, the court considered that the term ‘fotolibro’ (meaning ‘photobook’ in English) is descriptive of photobooks and other related products and services. In its view, this term is commonly used in the relevant sector to designate books or albums with digitally processed images, as well as related services. Consequently, the court dismissed the claim brought by Fotoprix for infringement of the trademark FOTOLIBRO.

Further, the court dismissed the infringement action concerning Vistaprint’s use of Fotoprix’s trademarks as AdWords. In particular, the court considered, in accordance with the judgment of the Court of Justice of the European Union in Google France (Joined Cases C-236/08 and C-238/08, March 23 2010), that the use of AdWords which coincide with third-party registered trademarks does not, in itself, constitute trademark infringement, when, as in this case, the advertisement enables the user to determine the origin of the products or services being advertised, and such use does not undermine the advertising function of the trademark. The internet referral system does not prevent the trademark holder from informing and attracting consumers under equal conditions; its aim is to suggest alternative companies to internet users.

The court also dismissed the unfair competition action, considering that, if the internet referral service aims to suggest alternatives and any company has access to it in equal conditions, it is unlikely that unfair competition could occur. Further, the use of third-party trademarks in this case does not violate any of the trademark’s functions.

As the court had upheld Vistaprint’s counterclaim and dismissed Fotoprix’s claims, it ordered Fotoprix to bear the entire costs of the proceedings.

Maite Ferrándiz, Grau & Angulo, Barcelona