Keyword advertiser held liable for trademark infringement

 

French company Onixxa owns French registrations for the word and device marks LYTESS for goods in Class 25 of the Nice Classification. Onixxa's manager also owns the French and Community trademarks LYTESS for goods in Class 25. Onixxa alleged that a search on the keyword 'Lytess' displayed an advertisement for its main competitor, French company Skin’up, among the sponsored links. Onixxa and its manager brought an action for trademark infringement against Skin’up before the French courts.   

 

The Paris Court of First Instance held that Skin’up had infringed the LYTESS marks. According to the court, internet users conducting a search on the keyword 'Lytess' would be led to believe that the goods offered by Skin’up and those offered by Onixxa originated from the same company. The court ordered that Skin’up pay €15,000 in damages and €15,000 in costs.  

 

In France, cases involving the AdWords system in which Google or a related company is not a defendant are rare. The French courts have consistently found in favour of the trademark owner in cases where the advertiser was named as the defendant. For example, on February 22 2008 the Paris Court of First Instance held that the purchase by an advertiser of the registered trademarks IDEO and SWEETDEV as keywords constituted trademark infringement.

 

Trademark owners are still uncertain as to which strategy to adopt in keying cases. They may file suit on the grounds of trademark infringement, misleading advertising or civil responsibility, but the appropriate basis for a claim against Google remains unclear. As a result, the Supreme Court has referred several questions to the European Court of Justice (ECJ) for a preliminary ruling (for further details please see "Supreme Court refers questions on keying to ECJ" and "More questions referred to the ECJ in Google Cases").

 

The Supreme Court of the Netherlands has referred similar questions to the ECJ (for further details please see "Supreme Court refers questions to ECJ in keying case"), which is expected to issue a decision within this year. In the meantime, trademark owners are advised to sue both Google (on the grounds of trademark infringement, misleading advertising and/or civil responsibility) and the advertiser (on the grounds of trademark infringement) in a single action, as this will increase their chances of success.