Toward the adoption of initial interest confusion

27 June 2011

Pauline Debré, Axel Munier

Under the doctrine of initial interest confusion in US trade mark law, there may be a finding of infringement where, as a result of the use by an advertiser of a third party’s trade mark, a consumer, who was initially interested in the advertisement in which said trade mark was used, later discovers, before making the purchase of goods or services, that such products or services in fact do not originate from the owner of the trade mark but from a competitor.

Not surprisingly, this concept has proved particularly useful in the context of confusion arising from the use of trade marks in the Google AdWords programme. As explained in the US case In Hearts on Fire Company LLC v Blue Nile Inc. (603 F Supp 2d 274 (D Mass 2009)):

“A classic example of [initial interest confusion] is where a consumer sets out in search of one trademarked good, but is then sidetracked en route to his or her original destination by a competitor’s advertisement or offering. He or she is never confused as to the source of origin or the product he eventually purchases, but he may have arrived there through either misdirection or redirection.”

In its Google ruling of 23 March 2010, the Court of Justice of the European Union (CJEU) took a different approach to this issue, centred on the function of indication of origin of the trade mark. However, many considered that the CJEU’s reasoning produces the same result. Indeed, the CJEU has ruled that:

“The question whether [the function of indicating the origin] of the trade mark is adversely affected when internet users are shown, on the basis of a keyword identical with a mark, a third party’s ad, such as that of a competitor of the proprietor of that mark, depends in particular on the manner in which that ad is presented.

“The function of indicating the origin of the mark is adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. (…)

This is in particular the case “where the ad, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the goods or services at issue, that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor” (paras. 83, 84 and 90).

French courts have immediately followed the CJEU ruling and now use the method prescribed by the CJEU to determine whether the use of a trade mark in the AdWords programme is an infringement.

A topical example is the recent Google v. Auto IES ruling by the Paris Court of Appeal on 2 February 2011. In this case, prior to the CJEU ruling, the Paris first instance court had found the advertiser liable for infringement. On appeal, the Court applied the principles set out in the Google CJEU ruling, in verifying whether the use of the trade mark adversely affected the function of indication of origin. After examining a detailed description of the Google search results page concerned, and more particularly of the commercial link as it appeared on this page, the Court held that “nothing [in this page] suggests to the normally informed and reasonably attentive internet user, the existence of an economic link between the advertiser and the trade mark owner”.

The recent Google v. Cobrason ruling of 11 May 2011 by the Paris Court of Appeal is also worth noting, although the CJEU ruling was not mentioned by the Court.  Here, the name ‘Cobrason’ had not been registered as a trade mark but only as a trade and domain name so there was no trade mark infringement issue; yet in its finding of unfair competition and misleading advertising, the Court held, after a careful analysis of the manner in which the final advertisement was displayed on the Google search results page, that a likelihood of confusion resulted from the unauthorised use of the name as a keyword in the AdWords programme. It is however possible that the decision will be reversed on appeal in view of subsequent decisions which have exonerated Google.

Both of these cases may have confirmed that the reasoning of the ‘initial interest confusion’ doctrine is on its way to being adopted in French law, through the lens of the Google CJEU solution. Indeed, it may be observed that, by following the CJEU solution to the letter, the Court implicitly upheld the reasoning of the ‘initial interest confusion’ doctrine: what matters is not whether, once on the advertiser’s website, the internet user will finally be mistaken as to the origin of the goods or services, but rather the initial confusion created by the advertisement as it is displayed on the Google search results page.

In practice, French courts tend to lean toward a balanced, intermediate solution, as sought by the CJEU in its Google ruling: a case-by-case analysis will be necessary to assess whether the use of a trade mark in the AdWords programme adversely affects the function of indicating the origin of the goods and services designated by that trade mark, and consequently whether such use is an infringement.