Ad tied to search results is infringing, rules Dutch court

Netherlands

In Pretium Telecom v Yiggers Nederland (Case KG04/1053, November 12 2004), a court in The Hague has ruled that the defendant's use of the plaintiff's PRETIUM mark as a keyword triggering an advertisement for the defendant on Google Inc's search engine site was infringing.

Both Pretium Telecom and Yiggers Nederland offer telephone services via carrier pre-selection. This service allows consumers to select in advance which company carries their telephone calls. Pretium filed a complaint against Yiggers and co-defendant Fourth Wave.

Yiggers was making use of Google's AdWords service so that when an internet user entered the term 'Pretium' as a search word, an advertisement for Yiggers appeared with the search results. The advertisement warned about the dangers of "telecom vipers" and invited internet users to visit Yiggers's website to obtain information before choosing a provider. Pretium also complained about Yiggers's own website in which it compared the tariffs of other service providers. Pretium argued that the comparison painted it in an unfavourable light.

For its part, Fourth Wave - under the alias Anne-Lise - was inviting internet users to send in complaints about Pretium so that it could compile a dossier on Pretium's alleged poor performance.

Pretium argued that all these actions infringed its registered PRETIUM mark and constituted unfair competition on the part of Yiggers and Fourth Wave.

The court upheld its claim in part. It noted that use of a mark as a keyword in itself is not infringing. However, infringement does occur where an advertisement is linked to the keyword search. Thus, Yiggers's use of PRETIUM in relation to its advertisement infringed that mark. The court also held that Fourth Wave's actions under its alias violated Pretium's trademark rights. However, it refused to accept that the comparative advertising on Yiggers's site was misleading and concluded that it did not constitute trademark infringement.

Paul Steinhauser, Steinhauser Hoogenraad Advocaten, Amsterdam

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