Use of trademark as AdWords keyword held to constitute infringement

Denmark
The Copenhagen Maritime and Commercial Court has provided useful guidance as to what is allowed - and what is not - in terms of Google's AdWords system (Case V-101-08, November 17 2010).
 
The defendant, Pixelpartner, subscribed to the AdWords system and used 'Billedbutikken' (meaning 'the picture shop') as a search term. The plaintiff, Billedbutikken, had been using 'Billedbutikken' as a name and trademark for its photo development business since 1982, and had started an online business in 1999 using the domain name 'billedbutikken.dk'.
 
Pixelpartner existed since 2006 and was active in photo development only via the internet. Using various search terms, including 'Billedbutikken', in the Google AdWords system was Pixelpartner's preferred marketing tool. When an internet user enters a term in Google's search engine, the ordinary search results come up, as well as the so-called sponsored links. In this case, if an internet user entered 'Billedbutikken' as a search term, Pixelpartner's website appeared at the top of the list of sponsored links under the heading 'Billedbutikken'.
 
Pixelpartner argued that the term 'Billedbutikken' was merely descriptive and could be used freely by competitors. The Copenhagen Maritime and Commercial Court disagreed. Billedbutikken was considered to be among the major players in the online market for photo development, in which the number of competitors is limited. The court held that the mark BILLEDBUTIKKEN had acquired a secondary meaning through intensive use. Therefore, the mark was protected under the Danish Marketing Practices Act (markedsføringsloven) and had a broader scope of protection.
 
With regard to the heading 'Billedbutikken', Pixelpartner claimed that it had been automatically generated by mistake and had been removed immediately as soon as the mistake had been discovered. Unsurprisingly, this argument did not convince the court.
 
The court found that Pixelpartner's use of 'Billedbutikken' as a keyword in the AdWords system led to internet users seeing Pixelpartner's advertisement when they were in fact looking for Billedbutikken's website. Such use was considered to take undue advantage of the trademark BILLEDBUTIKKEN and to constitute trademark infringement. Furthermore, the court held that Pixelpartner had acted contrary to the Marketing Practices Act. Billedbutikken was thus awarded damages and compensation.
 
In view of the function of a trademark as an indicator of origin, as discussed by the Court of Justice of the European Union in Google France (Joined Cases C-236/08 to C-238/08) (for further details please see "Google's use of trademarks as keywords does not constitute infringement"), the fact that 'Billedbutikken' was used as a heading for Pixelpartner's advertisement seems to have been decisive in this case. In addition, the search term 'Billedbutikken' stayed in the browser when Pixelpartner's advertisement was displayed on the screen. Billedbutikken claimed, successfully as it turned out, that internet users might be confused as to the origin of Pixelpartner's services or believe that there was a connection between the parties.
 
For those interested in the boundaries of use of the Google AdWords system, this decision sheds some light on the features that will be considered to be illegitimate.
 
Lisbet Andersen Bech-Bruun Copenhagen

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