French court clamps down on trademark keyword searches

The Tribunal de Grande Instance de Nanterre in France has held, in two separate cases, that it is illegal for search engine providers to permit advertisers to use trademarks as keywords to lure consumers to websites that do not offer the trademarked goods or services.

In the first case (Hotels Méridien v Google France), the court ruled that Google France had infringed the trademarks of Hotels Méridien by allowing advertisers, who do not offer Méridien's services, to use Méridien's trademarks as keywords.

The court found it especially troubling that Google France's Adwords program not only allowed advertisers to choose their own keywords, but it even featured a tool called 'suggestion tools', which helps advertisers come up with additional, more specific, keywords, including trademarked terms. The court explained that when users formulate search requests using keywords that are trademarked (eg, MÉRIDIEN or LE MÉRIDIEN) Google France's search engine directs them to commercial links of other companies offering identical or similar services, but not offering the trademarked goods or services. Such linking, said the court, is likely to confuse consumers regarding the source or origin of the goods or services.

In its defence, Google France directed the court's attention to an indemnification clause between Google France and its advertisers but the court refused to discharge Google France of its liability to Hotels Méridien. Google France was ordered to pay all court fees plus a €2,000 fine. Furthermore, the court directed Google France to cease immediately any such linking (i) to Hotels Méridien's trademarked terms or face a daily fine of €150, and (ii) within 72 hours of future notifications of listings violations, or face a daily fine of €2,000.

On January 17 2005, in SA Société Accor v SARL Société Overture, the court similarly ruled that SARL Société Overture's keyword activities were illegal and enjoined it from keyword linking SA Société Accor's trademarks to websites that do not offer products or services originating from Accor.

Lara A Holzman and Michael S Burns, Alston & Bird LLP, New York, with the translation assistance of Lada Soljan