U-turn on Google’s liability for Google Suggest results

France
In Omnium Finance v Google Inc (July 22 2010), the Court of First Instance of Paris has held that Google could not be held liable for the fact that the plaintiff's name and trademarks were associated with the words ‘arnaque’ and ‘escroquerie’ (French for 'rip-off' and 'swindle') in the Google Suggest tool. According to the court, the suggestions made by Google Suggest reflected only the most frequent searches performed by internet users and, consequently, served an informative purpose.
 
French company Omnium Finance owns two French registrations for the word and device mark OMNIUM & FINANCE in Class 35 of the Nice Classification. Omnium offers its services through two websites at 'omniumfinance.com' and 'omnium-finance.com'.
 
Omnium alleged that internet users searching for the terms ‘Omnium’ and ‘Omnium Finance’ were given the suggestions ‘Omnium Finance arnaque’ or ‘Omnium Finance escroquerie’ by the Google Suggest tool.Omnium filed suit against Google France and Google Inc for trademark infringement and injury to its name, requesting that these suggestions be removed.
 
In its defence, Google argued that its Google Suggest tool enables internet users to benefit from the experience of other users, as the suggestions are based on the most popular searches entered in its search engine.
 
Google added that, in light of the publicly available explanatory notice on its Google Suggest tool, the suggestions ‘Omnium Finance arnaque’ and ‘Omnium Finance escroquerie’ could not be regarded as reflecting Google’s own position - they only sought to help internet users based on the most frequent searches.  
 
The Court of First Instance of Paris agreed with Google’s arguments. The court pointed out that Omnium's marks had not been used to promote the services of competitors. Use of the marks by the Google Suggest tool fell within the ordinary course of business. The court further stated that the addition of a derogatory word, such as ‘arnaque’, to a company name could not, in itself, be prohibited, as it would contradict the freedom of speech.
 
This decision represents a complete U-turn on previous rulings. In December 2009 Google had been found liable in two cases involving Groupe JPL - CNFDI  and Direct Energie (for further details please see "Google held to be liable for Google Suggest results"). Therefore, trademark owners need further decisions on this issue in order to determine how best to enforce their rights and what are the most suitable grounds of action. 
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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