MONDAY, 6 DECEMBER 2010
Wrongful use of AdWord will infringe trade mark, rules Danish Court
In the recent dispute between Billedbutikken and Pixelpartner (Case V-101-08, 17 November 2010), the Copenhagen Maritime and Commercial Court gave an important ruling on the use by a keyword purchaser of the controversial Google AdWords system. Pixelpartner, an online photo development business since 2006 and an AdWords customer, used 'Billedbutikken' ('picture shop') as a search term. However, the plaintiff Billedbutikken had used 'Billedbutikken' both as a name and as a trade mark for its photo development business since 1982, also trading online since 1999 at 'billedbutikken.dk'. Following Pixelpartner's purchase of 'Billedbutikken' as a search term, Pixelpartner's own website appeared at the top of the list of links to sponsored search results under 'Billedbutikken'.
Billedbutikken sued for trade mark infringement and also under the Danish Marketing Practices Act. Pixelpartner however argued that the term 'Billedbutikken' was merely descriptive and could be used freely by competitors.
The Copenhagen Maritime and Commercial Court held for Billedbutikken, which it considered to be among the major players in the online market for photo development, a field in which the number of competitors is limited. The trade mark 'Billedbutikken', if initially descriptive, had acquired a secondary meaning through intensive use and was accordingly protected under the Marketing Practices Act (markedsføringsloven) and had a broad scope of protection.
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 looking for Billedbutikken's website. Such use was considered to take undue advantage of the trade mark BILLEDBUTIKKEN and to constitute trade mark infringement. Further,Pixelpartner acted contrary to the Marketing Practices Act. Billedbutikken was thus awarded damages and compensation.
The fact that the word 'Billedbutikken' was used as a heading for Pixelpartner's advertisement seems to have been decisive in this case. Also, since, the search term 'Billedbutikken' stayed in the browser when Pixelpartner's advertisement was displayed, internet users might be confused as to the origin of Pixelpartner's services or believe that there was a connection between the parties.
Source: article by Lisbet Andersen (Bech-Bruun, Copenhagen), " Use of trademark as AdWords keyword held to constitute infringement", posted online on World Trademark Review.
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