While the opinion of the ECJ on use of third parties trade marks to trigger sponsored links is eagerly awaited, such matters keep on coming in before the Paris first instance court.

In May 2008, the French supreme court, facing three Adwords cases, queried the ECJ on the responsibility of Google, as a sponsored link service provider. The hearing in this procedure took place on 17 March 2009 and the advocate general opinion is expected in June.

As in the meantime the Gifam case was the fourth one to reach the French supreme court level, this later court announced that it would not rule on said case until 15 September 2009, when the ECJ opinion should be available.

Paris first instance civil court did not show as much patience in January 2009 when examining a similar case where the -much debated before French courts- question of Google responsibility as a sponsored link service provider was at stake (on this decision: see Axel Payet's post on Vox PI).

Whether advertisers who bid on their competitors trade marks to trigger sponsored link are thus responsible for trade mark infringement is a question that reached the ECJ level at the request of the supreme courts of Austria, Netherlands and Germany (this is of course a simplification; previous Class 46 posts do not lack of precision on the formulation of these questions).

French courts never considered that there could be much doubt on such question and regularly held that advertisers that booked their competitors trade marks were responsible of trade mark infringement. Such was the situation of a recent case brought before the Paris first instance civil court, where the advertiser was the only defendent (such configuration is rather rare in France with 15% of the cases, according to personal statistics; in most cases Google responsibility is also searched).

As the judgment is not yet available on the jurisprudence database launched by INPI on 3 April 2009, Class 46 does hereby quote a summary of the case published in the World Trademark Review, by Jean-Philippe Bresson and Franck Soutoul (both being also contributors of the IP Talk blog):

In Onixxa v Skin’up (February 4 2009), the Paris Court of First Instance has held that an advertiser was liable for trademark infringement for purchasing the plaintiff’s trademark as a keyword on Google’s AdWords system.

French company Onixxa owns French registrations for the word and device marks LYTESS for goods in Class 25 of the Nice Classification. Onixxa's manager also owns the French and Community trademarks LYTESS for goods in Class 25. Onixxa alleged that a search on the keyword 'Lytess' displayed an advertisement for its main competitor, French company Skin’up, among the sponsored links. Onixxa and its manager brought an action for trademark infringement against Skin’up before the French courts.

The Paris Court of First Instance held that Skin’up had infringed the LYTESS marks. According to the court, internet users conducting a search on the keyword 'Lytess' would be led to believe that the goods offered by Skin’up and those offered by Onixxa originated from the same company. The court ordered that Skin’up pay €15,000 in damages and €15,000 in costs.