Isabelle Leroux and Olivia Lagache review the recent Google v Luteciel and Viatecum case and the implications in its wake.
On 10 March 2005, the Versailles Court of Appeal confirmed a decision reached by the Nanterre Court of First Instance concerning the selling of key words to advertisers and ordered Google France to pay 70,000 euros damages on trade mark infringement.
It is prohibited for a company to sell key words to advertisers corresponding to trade marks enabling the display competing commercial links offering similar or identical products and/or services to those covered by the trade mark typed in a search engine.
In one case, Overture, a Yahoo subsidiary providing advertising services, was ordered by the Nanterre Court of First Instance, on 17 January 2005, to pay 200,000 euros to the French group Accor for having sold key words to competitors that were trade marks belonging to the group Accor such as ACCOR, NOVOTEL, and SOFITEL.
In another case, on 16 December 2004, the Paris Court of First Instance also prohibited Google France from displaying competitors’ commercial links proposing products or services covered by the trade marks ‘Méridien’ or ‘Le Méridien’, whether or nor a request of search in respect of such trade marks were combined with the words ‘hotel’ and ‘resort’ were typed in the search engine.
Key and generic words
The present Google case before the Court of Appeal is of interest since it concerns the selling of key words that were trade marks as well as key words that were generic words.
In January 2003, Luteciel and Viaticum, two companies providing travel services, delivered a summons to Google France for trade mark infringement and unfair competition insofar as when an internet user was typing their trade marks ‘bourse des vols’ (flight exchange), ‘bourse des voyages’ (travel exchange) or ‘bdv’ on the Google search engine, competitors commercial links were also displayed on the web page.
This was possible because Google France was not only selling to advertisers key words that corresponded to the trademarks typed within the search engine i.e. ‘bdv’, ‘bourse des vols’,or ‘bourse des voyages’ but also, key words that were part of the trademarks such as ‘vols’ (flights) or ‘voyages’ (travel).
As a matter of fact, the broadmatch system used by Google displayed all of the placements purchased and paid for by advertisers, by reference to one or more of the words in the search query.
Google mainly claimed that (i) the trade marks were not valid due to their lack of distinctiveness; and (ii) it had no control over the key words sold to its advertisers.
The Nanterre Court of First Instance acknowledged the validity of the trade marks and considered that the use by Google France of the trade marks ‘bourse des vols’, “bourse des voyages” and “bdv” amounted to trade mark infringement.
As a result, this Court prohibited Google France from displaying advertisers’ commercial links which were identical or similar to the products or services covered by the trade marks typed by internet users in the search engine.
Therefore, Google France cannot display any commercial links offering identical or similar goods and/or services to those covered by the trademarks typed within the search engine, even if Google has only sold the generic key word ‘vol’ (flight) to the advertisers.
Despite the fact that Google France claimed that the choice of the key words and the content of the commercial links were those of the advertisers and not its own, the Versailles Court of Appeal decided that Google should (i) pre-control the words reserved by its clients; and (ii) proceed to a prior rights search on that words even though they were often typed in the search engine.
Therefore, the Court of Appeal confirmed (i) the validity of the trade marks and (ii) that the use by Google France of trade marks (‘bourse des vols’, ‘bourse des voyages’ and ‘bdv’) enabling the display of commercial links that provide similar or identical products and/or services to those covered by the trademark(s) typed in the search engine amount to trade mark infringement in accordance with article L. 713-2 of the French IP Code.
Finally, it seems that the Court also confirmed that when a request is typed in the search engine, Google does not have the right to display competing advertisers’ commercial links on the web page, even though the advertiser has only paid for a generic key word such as ‘vol’!
Obligation to acquire knowledge
In our opinion, when the trademarks ‘bourse des vols’ or ‘bourse des voyages’ are typed, only advertisements for those specific sites or affiliated or authorised sites may be posted within the commercial links.
Therefore, in order to avoid the display of competing commercial links when a trade mark is typed, it would seem that with this latest case, these companies may have the obligation to acquire knowledge of prior existing rights such as trade marks, trade and company names and their corresponding products and services.
Due to the various actions brought against Google in France, it may therefore be obliged to change its policy with respect to the selling of key words and provide a prior control over the key words sold like some of its competitors such as Espotting do.
Don’t such obligations threaten the existence of companies that offer paid for placement services linked to the selling of keywords since they extend to the control over generic words under certain circumstances?
First published in the June 2005 issue of Trademark World.
 Versailles Court of Appeal 12e chamber, Section 1, March 10th , 2005
Nanterre First Court of Justice, October 13th , 2003