Cases Addressing the Use of Another Party's Mark as a Keyword to Generate Sponsored Links in ...

153 Pages·2013·0.93 MB·English

Cases Addressing the Use of Another Party’s Mark as a Keyword to Generate Sponsored Links in Internet Search Engines
(Chart indicates whether an issue is discussed by the court –click on case name in chart to go to case summary)
Initial Evidence
Mark in
Case Name & Citation Holding Other Key Points Nominative Descriptive Interest Regarding Actual Intent to
Ad Text
Confusion Confusion Confusion Confuse
Argentina
Organizacion Veraz v. Open Discovery Court found that use of The Court found that the N/A N/A N/A N/A N/A N/A N/A
(May 28, 2009 - Federal Court of keyword constituted keyword use had been
Appeals, Civil and Commercial Matters) unauthorized use of the undertaken with the aim of
competitor’s trade-mark attracting consumers
and that the plaintiff could seeking information
prevent the use of its mark regarding the trade-mark
under the Unfair owner to the competitor’s
Competition Rules. web page and that such use
may cause confusion or a
mistake about the origin of
the services.

Australia
Australian Competition and Consumer The Court declared that Google adequately YES N/A N/A N/A YES N/A N/A
Commission v. Trading Post Australia the Trading Post violated represented that Trading
Pty Ltd [2011] FCA 1086 the Act and required it to Post’s advertisements were
pay ACCC’s costs in fact adverisments by
because Trading Post’s including the word
keyword advertising was “sponsored,: referring to
likely to mislead and sponsored links as “Ads by
confuse consumers. The Google,: and by placing
Court did not enter a links within a shaded
judgment against Google rectangular box; Trading
because Google did not Post, and not Google, made
make the representations the representations
in the advertisements and conveyed by Trading Post’s
it acted as a mere conduit advertisements and Google
of information. merely communicated
Trading Post’s
representations without
adopting or endorsing any
Page 1 of 153
of it; and Even if Google
had made the
representations, it would
potentially have a defense
under § 85(3) of the Act
because it accepted the
advertisements as
completed documents in
the ordinary course of its
business and it did not
know and had no reason to
suspect that the publication
of the ad would amount to
a violation of the Act.

Australian Competition and Consumer The Court set aside, in Sponsored links were YES N/A N/A N/A YES N/A N/A
Commission v. Google Inc. , [2012] part, the judgment of the Google’s response to the
FCAFC 49 Federal Court and user’s query;
declared that Google had Even though it was the
violated the Act for its advertiser who selected the
role in publishing key words triggering the
advertisements that advertisement’s display,
included keyword terms Google’s conduct and the
that were likely to mislead nature of the AdWords
consumers. The Court program meant that Google
ordered that Google was doing more than
establish and implement a passing on the statements
consumer law compliance of the advertiser;
program, and that Google and
pay ACCC’s costs of Google had not produced
appeal and trial (with sufficient evidence to
regards to “Harvey World establish the Publisher’s
Travel,” “Honda.com.au,” Defense.
“Alpha Dog,” and “Just
4x4’s” Magazine
advertisements).

Google Inc. v. Australian Competition Google’s conduct was not Fact that Google’s Yes Not Not Not No No No
and Consumer Commission, [2013] misleading or deceptive employees suggested Discussed Discussed Discussed
HCA 1 (Austl.) by merely publishing or offending keyword and
displaying misleading or keyword insertion
deceptive advertisements insufficient to hold Google
in the form of “sponsored liable
links”
Page 2 of 153
Austria
Wein & Co. v. Weinwelt, Supreme The Court held that the The court also rejected YES NO NO N/A YES YES YES
Court of Austria (Oberster Gerichtshof, use of a competitor’s Defendant’s argument that
20 March 2007-17 Od 1/07, MMR 2007, registered trademark (that the mark “Wein & Co” is
497) is non-descriptive) as descriptive. While the
Google adword is a per se word “Wein” is
infringement because the description, with the
appearance of the link addition of the word “Co.”
above the search results, plaintiff achieved a
using the Plaintiff’s mark different meaning and
as a header, created a therefore the word mark
danger of consumer “Wein & Co.” is protected,
confusion. as is the company trade
. name”Wein & Co.”
Moreover, the protected
mark is well-known and
serves as reference for the
source of the product and a
specific company.

Canada
Chocolat Lamontagne Inc. v. Humeur Passing off action based N/A Yes No No No Yes No No
Groupe Conseil Inc. 2010 CarswellQue on use of keyword and
7592, EYB 2010-177107, 2010 QCCS sponsored link indicating
3301, J.E. 2010-1521 the Defendant was
“alternative to” the
Plaintiff. The court held
that such advertising did
not constitute unfair
competition and the action
was dismissed.
Page 3 of 153
Private Career Training Institutions Action by agency The injunction was sought on No No No Yes Yes Yes No
Agency v. Vancouver Career College overseeing British the basis of breach of bylaws
(Burnaby) Inc., 2010 BCSC 765 aff’d, Columbia career training prohibiting “false, deceptive or
2011 BCCA 69 institutions seeking misleading” advertisements.
injunction against use of The court held that the
business names of advertisements in question
competitors in internet were not deceptive as the
advertising dismissed. Defendant did not hold itself
out as anyone other than who
they are and did not use the
business names or trade-
names of competitors to
misidentify themselves.

The Court of Appeal
specifically indicated that
cases that deal with confusion
in the trade-mark context are
not of assistance in this case
but nevertheless found that the
trial judge had correctly
focused on the definition of
“misleading” in the context of
the bylaws in question.
China
HTS (Beijing) S& T Co., Ltd, The court found Protech Baidu found not liable N/A N/A N/A N/A N/A N/A N/A
HTS(Beijing)Engineering and (Beijing) Co., Ltd liable since: 1. No evidence to
Equipment Co., Ltd vs. Protech(Beijing) for unfair competition indicate Baidu knew or
Co., Ltd and Baidu (March, because it purchased the should know the keyword
2011,Beijing Chaoyang District plaintiff’s well-known was infringing; 2. Baidu
People’s Court) trade name and seized the had told the defendant the
Page 4 of 153
plaintiff’s opportunity to keyword should not
be found on the internet infringe other’s right; 3.
by the relevant public thus Baidu had stopped the link
placing the plaintiff at a in a timely fashion.
competition disadvantage.
Baidu found not liable.

Beijing Letao Culture Development Co., The court found Beijing N/A N/A N/A N/A N/A N/A N/A N/A
Ltd vs. Beijing Okbuy Information Okbuy Information
Technology Co., Ltd and Technology Co., Ltd was
Google(November, 2010, Beijing liable for unfair
Haidian District People's Court) competition because it
purchased the plaintiff’s
well-known trade name
“Letao” as a keyword
from Google which seized
Letao’s business
opportunity.
Google was found not to
be liable as the evidence
was not sufficient.

Beijing Orient Qingruan Science and Defendant found liable for Court found purchase of N/A N/A N/A N/A N/A N/A N/A
Technology Co., Ltd vs. Beijing Langde unfair competition as a trademark as a keyword
North Software Education Technology result of purchase of could confuse customers
Co., Ltd.(July,2010, Beijing Haidian plaintiff’s registered and violated the principle
District People's Court) trademark “Qianruan of good faith.
International” as a
keyword on Baidu.

Baidu found not liable
since the defendant was
the real actor.

800APP v. Beijing Volitation Purchasing of trade-mark The Court found that the N/A N/A N/A N/A N/A N/A yes
Information Technology Company as keyword was 800 APP ads which
(May,2010, Beijing No.1 Intermediate infringement and contained references to
People’s Court) defendant ordered to pay “XTools” was a deliberate
damages. Baidu found not attempt to confuse
liable customers.

Baidu found not liable as it
had taken correct actions to
sever the links and cease
Page 5 of 153
the advertising of those
infringing ads in a timely
fashion after it received
notice, and had monitored
its site to a reasonable
degree.

Beijing Shisanba Cosmetic surgery Defendant competitor N/A N/A N/A N/A N/A N/A N/A N/A
Hospital vs. Beijing Evercare found liable for unfair
Mcd.Institution and Baidu(2009,Beijing competiton as a result of
Chaoyang District People’s Court for purchase of the plaintiff’s
frist instance; April 2010, Beijing No.2 well-known trade name
Intermediate People’s Court for second “Shisanba” as a keyword
instance) from Baidu which was
found to confuse the
public.
Baidu also found liable for
not reviewing the
competitor’s keyword
which was its obligation
according to their contract.

Baidu v. Shanghai Dazhong House Baidu search engine sued N/A No Yes No No No No No
Moving Logistics Co. (June, 2008; on the basis of selling a
Shanghai Second Intermediate Peoples trade-name as a keyword
Court) to competitors of the
plaintiff. The Court held
that Baidu had violated the
trade-mark rights of the
plaintiff.

Google v. Guangdong Gangyi Electrical Competitor purchasing The first judgment held No No No No No Yes No
Appliance Co. (May, 2008; Guangzhou keyword found to infringe Google not liable since it
Baiyun Basic Court for first instance. rights of trade-mark owner did not have the ability to
March,2010 ,Guangzhou Intermediate and ordered to pay check or control
People's Court for second instance) damages. information submitted by
customers and had no
Google found liable on obligation to examine
appeal. legality of the information.
Google had terminated the
keyword advertising in
question after the lawsuit
had been initiated.
The final decision held
Page 6 of 153
Google was liable since it
does have the obligation of
reviewing.

Beijing Quannao Education Scientific Defendant found not liable N/A N/A N/A N/A N/A N/A N/A N/A
Research Institute VS. Kunming for trademark
Jingyingte Technology Development infringement or unfair
Co., Ltd.(December,2007, Beijing competition by using the
Haidian District People's Court) plaintiff’s registered
trademark “Quannao” and
“Quannao Speed Read” as
keywords since the
defendant’s act was
reasonable and legal.
Baidu also found not
liable since it had met the
obligation to review the
relevance of the keyword.

European Court of Justice
Interflora Inc. v. Marks & Spencer plc The court also made No No No N/A N/A N/A N/A
Flowers Direct Online Limited, opinion comments regarding the
of advocate general Jaaskinen, factors that the referring
September 22, 2011, Case C-323/09 court may take into
account, including the fact
that the commercial
network of Interflora is
composed of a large
number of retailers varying
greatly in size and profile.

Interflora Inc. v. Marks & Spencer plc The advocate general was No No No No No No No
Flowers Direct Online Limited, opinion constrained by the findings
of advocate general Jaaskinen, March in the prior keyword
24, 2011, Case C-323/09 decisions of the ECJ.

Portakabin BV v. Primakabin, BV (Case Plaintiff’s appeal from N/A Yes Yes No Yes No No No
C-558/08 (8 July 2010) lower decision that
defendant’s keyword use
was not used in relation to
goods under the EC
Directive was remanded to
Page 7 of 153
the National Court for
factual determination. The
Court found that the
keyword use by defendant
of the plaintiff’s trade-mark
was “used in the course of
trade” under the EC
Directive and “use in
relation to goods”.
However, the Court further
found that such use could
not adversely affect the
function of the plaintiff’s
mark to indicate origin if
the ad did not enable a
“normally informed and
reasonably attentive internet
user or enabled them only
with difficulty,” to
determine whether the
goods originated with the
plaintiff or the defendant.
That was the factual issue
for the National Court to
determine.

Eis.de GmbH v. BBY Article 5(1)(a) of First None No No No Not No Not Not
Vertriebsgesellschaft mbH (case C- Council Directive expressly expressly expressly
91/09, Order dated 26 March 2010) 89/104/EEC of 21 addressed. addressed. addressed.
December 1988 to
approximate the laws of
the Member States
relating to trade marks
must be interpreted as
meaning that the
proprietor of a trade mark
is entitled to prohibit an
advertiser from
advertising, on the basis of
a keyword identical with
that trade mark which that
advertiser has, without the
consent of the proprietor,
selected in connection
Page 8 of 153
with an internet
referencing service, goods
or services identical with
those for which that mark
is registered, in the case
where that advertisement
does not enable an average
internet user, or enables
that user only with
difficulty to ascertain
whether the goods or
services referred to therein
originate from the
proprietor of the trade
mark or an undertaking
economically connected to
it or, on the contrary,
originate from a third
party.

Google France v Louis Vuitton Defendant lost in lower Advocate General (AG) No No No N/A N/A N/A N/A
Malletier SA (Case C-236/08), Google court and on appeal. found that Google did not
France v Viaticum SA & Luteciel French Supreme Court infringe by allowing
SARL (Case C-237/08) and Google referred questions to ECJ, advertisers to select
France v CNRRH (Case C-238/08) Advocate General issued keywords corresponding to
(September 22, 2009) advisory opinion (not trademarks and the display
binding on ECJ). of sponsored links did not
itself constitute
infringement. AG left open
the issue of whether
Google may be liable in
tort under national law.

Court of Justice found that N/A Yes No No No No No No
Google v. LVMH (c-36/08); Viaticum use of keywords by
and Luteciel (c-237/08) and CNRRH, advertisers may constitute
Tiger, Thone and Raboin (c-238/08), trademark infringement if
Decision of the Grand Chamber of the it is not clear to an average
European Court of Justice internet user viewing the
ad that the goods or
services do not originate
from the trademark owner,
ISPs providing keyword
advertising services are
Page 9 of 153
not liable for trademark
infringement, and the
hosting safe harbour
provision of Article 14
may apply to ISP keyword
advertising systems.

Court of Justice of the European Union Article 5(1) must be NO NO NO N/A N/A N/A N/A
(First Chamber), reference fro a interpreted as meaning
preliminary ruling on the interpretation that the proprietor of a
of Article 5(1) of First Council Directive trademark is entitled to
89/104/EEC, decision of March 25, prohibit an advertiser from
2010, Case C-278/08, Die Berg Spechte advertising, on the basis of
Outdoor Reisen und Alpinschule Edi a keyword identical with
Koblmuller GmbH v. Gunter Guni, or similar to that
trekking.at Reisen GmbH trademark, which that
advertiser has, without the
consent of the proprietor,
selected in connection
with an internet
referencing service, goods,
or services identical with
those for which that mark
is registered, in the case
where that ad does not
enable an average internet
user, or enables that user
only with difficulty, to
ascertain whether the
goods or services originate
from the proprietor or
from a third party.

France
Cobrason v. Google France and Home Appeals Court held that N/A Does not No No Yes No No Does not
Cine Solutions (Paris Commercial Home Cine Solutions and appear to appear to
Court, 23 October 2008; Paris Appeal Google were liable for be the be the case
Court, 11 May 2011) unfair competition and case
also held that Google had
contributed to the
confusion through its
Adwords program by
displaying Home Cine
Page 10 of 153