The President of the Brussels Commercial Court gave judgment on 3 February 2011 in two decisions relating to the registration and the use of AdWords by a competitor.
The facts at stake were the following: ADSL-Telecoms, acting as agent of the major triple play service provider on the Belgian market, Belgacom, bid on the signs ‘Be TV’ and ‘Voo’ as AdWords, in order to refer internet users to its website www.Adsl-telecoms.be through the following commercial links « Voo ou Belgacom TV gratuit » and « Be TV ou Belgacom TV gratos » (“Voo or Belgacom TV for free” and “Be TV or Belgacom TV for free”).
Tecteo is Belgacom’s major competitor in the French speaking part of Belgium where it commercializes its triple play offer under the trademark ‘Voo’.
Be TV, a company owned by Tecteo, also offers a pay-TV offering.
Tecteo and Be TV initiated parallel cease and desist proceedings before the President of the Brussels Commercial Court to stop ADSL-Telecoms uses of the signs ‘Voo’ and ‘Be TV’. The legal provision invoked was Article 2.20.1.a of the Benelux Convention on Intellectual Property (C.B.P.I), which corresponds to Article 5.1.(a) of the harmonization Directive 89/104 of 21 December 1988.
The President of the Court of Commerce dismissed the claims.
Referring to the ECJ rulings in the Joined Cases C 236/08 to C 238/08 Google France and Google and in the case C-558/08 Portakabin vs Primakabin, the court noted that a trade mark proprietor cannot oppose use of a sign, identical with its mark, if that use is not liable to damage the functions of that mark, and that the Court of Justice held that (i) as regards the use of signs identical with trade marks as keywords for a referencing service, the relevant functions to be examined are the function of indicating origin and the function of advertising, (ii) as regards the function of advertising, the use of a sign identical with another person’s trade mark in a referencing service such as ‘AdWords’ is not liable to have an adverse effect on the advertising function of the trade mark, and finally that (iii) the function of indicating the origin of the mark is adversely affected if the advertisement 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 advertisement originate from the proprietor of the trade mark or an undertaking economically linked to it or, on the contrary, originate from a third party.
The President of the Court of Commerce of Brussels held that the function of indicating origin was not adversely affected in this case as the commercial battle between Voo and Belgacom on the triple play market is very well known by the public, which will therefore immediately understand that the advertisements to which the AdWords refer are related to services offered by Belgacom or its agents.
Meanwhile, the Court of Justice ruled on 22 September 2011 in the case C-323/09 Interflora vs Marks & Spencer that the use of signs identical with trade marks as keywords for a referencing service may affect another trade mark function, i.e. the ‘investment’ function. The Court of Justice explained that this function is adversely affected when the use by a competitor of a sign identical with the trade mark in relation to goods or services identical with those for which the mark is registered substantially interferes with the proprietor’s use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.
In this respect, the Court of Justice added that it cannot be accepted that the proprietor of a trade mark may – in conditions of fair competition that respect the trade mark’s function as an indication of origin – prevent a competitor from using a sign identical with that trade mark in relation to goods or services identical with those for which the mark is registered, if the only consequence of that use is to oblige the proprietor of that trade mark to adapt its efforts to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.
This last detail makes it difficult to determine what will be the real impact of the investment function in assessing whether a trade mark owner may oppose the use of a keyword similar to its trade mark. In any case, it seems likely that the President of the Court of Commerce of Brussels would not have come to a different conclusion if he had examined whether the investment function of the trade marks concerned had been affected.
In addition, the Court of Justice also confirmed that in a similar case, the trade mark owner may in principle also invoke Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation 40/94 to oppose the selection as keywords of signs identical or similar to the trade mark where that use takes unfair advantage of the distinctive character or the repute of the trade mark (free-riding) or is detrimental to that distinctive character or repute (dilution, being the reduction of the distinctiveness of the mark, by turning the trade mark into a generic term).
Again, the President of the Court of Commerce of Brussels would probably have come to the same conclusion if he had examined the corresponding provision in Benelux law, i.e. article 2.20.1.c of the Benelux Convention on Intellectual Property (C.B.P.I).
Indeed, the Court of Justice has held that the proprietor of a trade mark with a reputation is not entitled to prevent advertisements displayed by competitors on the basis of keywords corresponding to that trade mark, which put forward an alternative to the goods or services of the proprietor of that mark – without offering a mere imitation of the goods or services of the proprietor of that trade mark, without causing dilution or tarnishment and without, moreover, adversely affecting the functions of the trade mark with a reputation.
In this respect, the Court of Justice ruled that there is no dilution of the trade mark if the advertisement triggered by the keyword enables the reasonably well-informed and reasonably observant internet user to tell that the product promoted by the competitor is independent from that of the owner of trade mark with a reputation. This was precisely the opinion of the President of the Court of Commerce of Brussels in the Belgian case.