While the ECJ is being queried by four series of questions relating to sponsored links (see our previous entries on the questions passed to the ECJ by the supreme courts of France, Austria, Netherlands and Germany), trade mark use and possible infringement to trade mark rights, a judgement of the Paris first instance civil court was issued on 7 January 2009.

The French supreme court opened this series of questions when it turned to the ECJ in May 2008 to require an interpretation of the Trade Mark and of the Electronic Commerce Directives as to the responsibility of the sponsored link service provider (i.e. Google). In another case dealing with similar questions, the third section of the Paris first instance civil court did not wait for the ECJ opinion and provided its own answers.

At stake here is the responsibility of Google, in relation with the functionalities of its AdWords system and its efforts to prevent and reduce third parties rights infringement. A distinction is made between two stages. First considered is the sponsored link system itself, including the suggestion tool that Google provides to advertisers lacking inspiration when choosing keywords that will trigger their advertisement. Then at a second stage, the display of the advertisement is examined. Another distinction is also made, in this situation pursuant to the legal means invoked, which are trade mark infringement on the one hand and civil responsibility on the other hand.

Regarding the suggestion tool :

The court deems that there is no trade mark infringement by Google itself, because "infringement to third parties trade marks are realized only when the advertiser has chosen one of these denominations as a keyword without their owner's consent". Google is not considered as using the trade mark when displaying it in its suggestion tool, according to the judgement, because it "does not a priori know whether the advertiser will chose this trade mark and in such case whether its client is authorized to use it, for instance as a distributor of authentic products or as a licensee".

The court adds that "only the advertiser who knows that he is not authorized to use the chosen trade mark as a keyword commits an act of infringement since the concerned audience, namely internet surfers who type the keyword, will put into relation the products and services with the trade mark that he proposes on his advertisement when results are displayed".

Regarding the display of the advertisement:

At this stage also, there is no trade mark infringement by Google itself for similar reasons to those exposed above. The civil responsibility of Google however can be engaged under certain circumstances.

The judgement states that an advertising agency has an"obligation regarding the availability of the signs it proposes its clients to use in their advertisements" and that Google is faulty when "not verifying that after an advertiser has chosen a keyword that is a trade mark or a company name or a domain name, that such use by the advertiser is not contrary to trade mark law or to trade loyalty rules".
Therefore, the court continues, as Google suggests keywords that subject to IP rights in order to use these in the course of trade, it is up to Google to check that its advertisers are indeed authorized to use these terms. Google must conform to loyal trade practices and must therefore "adopt precaution measures in order not to facilitate infringement to third parties rights by making this tool available".
Even if "the amount of sponsored links, chosen keywords and targeting options and the multiplicity of protected distinctive signs, all make filtering of the ad triggering requests difficult, it is up to Google to set up all possible and available technical means to achieve it".

In the present case, Google had integrated the litigious trade marks and later on their variations on its "TM Monitor List" in order to avoid them to be chosen by other advertisers. It also deleted such terms from the accounts of the advertisers which were reported by the plaintiffs.

However Google had not taken any measures to exclude the display of advertisements in response to requests that included the trade marks of the plaintiffs or their variations, whereas it was in possession of such a list since 12 May 2004 and considering that the number of its clients among tour operators was limited.

Regarding misleading advertising:

Finally, the court also added that in the result page of the search engine, the distinction between natural results and sponsored links was not clear enough. According to the court this can lead visitors to think of an association between the services protected by the trade marks owner and those proposed under the sponsored links at stake. Google is thus condemned for infringement to article 20 of the law of 21 June 2004, which requires that on-line advertising be clearly identified as such.

The global prejudice is valued to 350 000 euros.

References of the decision:
Judgement of 7 January 2009,
Paris First instance civil court, 3rd ch., 3rd sect.
Voyageurs du Monde, Terres d’Aventure / Google France, Google Inc, Google Ireland.

Link to the decision (in French)