Last June, the Provincial Court of Madrid turned into submitted a case of trademark infringement with the aid of Google’s tool called “AdWords”. More specifically, in this situation, CLINICAS ORTODONCIS sued LABORATORIOS LUCAS NICOLÁS due to the use that the latter were doing of the previous’s trademark as key-word for its advertising, that regarded as a backed hyperlink whilst an internet seeks on Google’s engine the time period brought as a keyword.
The gadget of Google AdWords is well known nowadays. It “allows any financial operator, by way of the selection of 1 or more keywords, to obtain the setting, inside the event of a correspondence among one or more of these words and that/those entered as a request in the seek engine by using an internet consumer, of an advertising link to its internet site”1. A Google-backed hyperlink has the subsequent shape: A hyperlinked textual content that ends in the advertiser’s web site, an “ad” disclaimer next to the advertiser’s internet site cope with and, finally, a business text.
The defendant alleged that it had by no means hired using “orthodontics” as a keyword for its backed ad; and therefore, that it should have resulted from a failure of the gadget. The Court did now not overlook the possibility of an occasion like this to arise, but, it reminded LABORATORIOS has the weight of proof, while the plaintiff has provided pieces of evidence of his allegations.
In absence of latest proof, the Court concluded established by means of the claimant that LABORATORIOS LUCAS had i) hired Google AdWords service; ii) used “orthodontics” as a keyword; and, iii) included CLINICAS ORTODONCIS’ trademark as a part of the hyperlinked commercial text that headed the backed advert link.
Following, the Provincial Court of Madrid denied applying Unfair Competition guidelines, given the rights that the registered trademark’s holder had, contrary to what the Judge on First Instance had dominated.
As an end result of the supplied evidence, the Court envisioned that the applicant’s trademark is related through the public to the internet site addresses of the defendant, wherein the latter promotes its services. It follows that the offerings come from the equal supply or from two exclusive service provider that proportion an economic hyperlink.
This selection is not anything but sudden when compared to super precedent decisions from the Spanish Supreme Court (Decision 541/2017, 15thFebruary 2017, Orona S. Coop v. Citylift, S.A.) and the Court of Justice of the European Union – 23rdof March 2010 (Lv- Google); 25thof March, 2010 (Bergspechte), 8thof July, 2010 (Portakabin – Primakabin) and 22ndof September, 2011 (Interflora – Mark & Spencer’s) -.
The above-mentioned choices went via a scrupulous method of evaluation which will determine, now not handiest if the claimants’ trademarks had been used as key phrases or appeared in the subsidized hyperlink, however additionally if these took element “in a way in which that advertisement is presented”. As expressed in Interflora.
That function is adversely affected if the commercial does now not enable moderately properly-knowledgeable and fairly observant internet customers, or enables them handiest with difficulty, to check whether the goods or services referred to by the commercial originate from the proprietor of the trademark or a mission economically linked to it or, on the contrary, originate from a third party (Google France and Google, paragraphs 83 and eighty-four, and Portakabin, paragraph 34). In one of these states of affairs, that is, furthermore, characterized by the truth that the advertisement appears right now after the alternate mark has been entered as a search term and is displayed at a point while the alternate mark is, in its capacity as a seek time period, additionally displayed at the screen, the internet consumer may be incorrect as to the origin of the goods or offerings in query (Google France and Google, paragraph 85).
The Appeal Court took into consideration that in this case, the use of the competitor’s mark as a key-word had crossed those red lines drawn by way of the CJEU and, consequently, concluded that an indicator infringement (and no longer unfair opposition) took place.