Google condemned again in keying case

A French court of first instance has condemned Google Inc on the basis of civil liability for selling the registered trademarks VOYAGEURS DU MONDE and TERRE D’AVENTURE as triggers for sponsored advertisements through its AdWords system (January 7 2009). However, the court refused to hold that Google was liable for trademark infringement. The issue of whether providers of sponsored links should be condemned on the grounds of trademark infringement or civil liability is currently the subject of heated discussions in France and other EU countries.
French travel companies Voyageurs du Monde and Terre d’Aventure owned registrations for:
  • domain names containing these marks.
The companies sued Google on the grounds of trademark infringement, unfair competition, unfair use of their company names and fraudulent advertising.
In its defence, Google contested the validity of the evidence collected by the Agency for the Protection of Programs (APP). According to Google, APP’s interventions should be limited exclusively to cases involving the infringement of authors’ rights. The court rejected this argument, holding that nothing prevented APP from intervening in general IP cases. This principle has already been recognized in other jurisdictions.
However, the most interesting element of the decision was the issue of Google’s liability. This issue has been addressed on several occasions by the French courts since the 2003 decision in the first Bourse des Vols Case (eg, see “Google's sponsored links infringe trademarks” and “Google's AdWords appeal rejected”). In these early decisions, the French courts considered that the sale of registered trademarks as keywords could constitute trademark infringement.
However, in several decisions dated 2006 and 2007, the courts ruled against providers of sponsored links based on the principle of civil liability (or, in certain cases, misleading advertising), rather than trademark infringement. Since then, the courts have been wavering between these two grounds of action.
Certain judges and scholars consider that a claim for trademark infringement cannot succeed in keying cases, as infringement can occur only where the mark is used without the owner’s consent in relation to goods and/or services that are similar to those covered by the mark. According to this line of thought, Google uses the marks mainly for advertising services, but cannot be held responsible for the use made of the marks by the entity that buys them as keywords. Moreover, in certain cases (as here), the marks at issue were generic.
This issue is so contentious that the French Supreme Court has referred questions to the European Court of Justice (ECJ) for a preliminary ruling in cases involving the AdWords system (for further details please see “Supreme Court refers questions on keying to ECJ” or “More questions referred to the ECJ in Google Cases”).
In the present case, the court considered that only the entity that had bought the keywords was liable for trademark infringement, as it made use of the marks for services similar to those covered by the marks at issue. However, Google was condemned on the basis of civil liability, as it should have ensured that the keywords did not infringe the rights of third parties. The court also found against Google on the basis of misleading advertising.
The court ordered that Google pay €200,000 to Voyageurs du Monde and €150,000 to Terre d’Aventures.
The decision of the ECJ on keying is awaited with great interest.
Jean Philippe Bresson and Séverine Fitoussi, Inlex IP Expertise, Paris

Unlock unlimited access to all WTR content