The Google Adwords system, allowing undertakings to purchase keywords and display advertisements on their basis, leads to legal difficulties when a keyword is a third party trademark. The growing number of French decisions against Google brings us to establish a portrait of the most significant aspects.
Trademark counterfeiting Most of the decisions against GOOGLE have retained trademark counterfeiting because of unauthorised reproduction and use of trademarks in the computer tool proposed to advertisers. This was illustrated particularly in a Court of Appeal decision dated June 28, 2006,involving LVMH. The Court even ruled that the counterfeiting had also lied in the displaying itself of the plaintiff’s marks for identical and highly similar products on a computer screen.
Misleading advertising In the decision of June 28, 2006, misleading advertising has also been retained in respect of the “Commercial links” generated by a search. This mention was regarded as making oneself believe that the trademark owner has real commercial relationships with the advertisers, so that any internet user could expect authentic products when clicking on the commercial links.
Unfair competition Unfair competition has additionally been alleged by LVMH and admitted by the Court on June 28, 2006,toward company names, sign boards and even domain names owned by the plaintiff.
Civil responsibility Some decisions have also retained civil liability: Google has been in breach of the law for not having elaborated a system that would ensure that a keyword chosen by one undertaking would not infringe third parties’ rights. This basis along with trademark counterfeiting has been retained in the LVMH case. On July12, 2006, the Court of First Instance rejected the trademark counterfeiting considering that GOOGLE itself had not been using the marks for a particular good or service and admitted only the civil liability. French competence for all GOOGLEs !
On October 11, 2006, the Paris Court of First Instance admitted its competence for trademark counterfeiting case against the German GOOGLE as the IP address of the computer of the French user had led to a search performed in French. The French case law offers various tools enabling to act against GOOGLE without giving consideration to the technical difficulties raised by the search engine. A High Court decision could, however, help to choose between trademark counterfeiting and civil responsibility which each require a distinct situation and an analysis made prior to any claim.