MADRID COMMERCIAL COURT NO. 9, DECISION OF 22 DECEMBER 2011, MAHERLO IBERICA S.L. V. CALZADOS FERNANDO GARCÍA S.L.
Further to the Court of Justice (CJEU) doctrine in Google France v. Louis Vuitton, one of the Madrid commercial courts recently enjoined a competitor from using the plaintiff's registered trademarks as keywords in Google's AdWords and metatags.
Metatags are instructions –labels- of HTML used in order to identify the type of content of a given website.
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Maherlo Ibérica, S.L. (Maherlo), a company selling height elevation shoes, brought proceedings against one of its competitors claiming, inter alia, that he infringed its trademarks by using signs similar to its trademarks as keywords in Google's AdWords.
Maherlo is the owner of the figurative trademarks "MASALTOS" and "MASALTOS.COM", registered in classes 18, 25 and 35 and in classes 18 and 25, respectively. "MASALTOS" is the joint expression of the Spanish "más altos", i.e. higher.
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The defendant sells height elevation shoes on its website (www.hiplus.com). He used the words "MASALTOS" and "MAS ALTOS" on the website as well as keywords in Google's AdWords and metatags. He also used the banner "HOMBRESMASALTOS.COM" (in English: "taller men").
Upon service of the complaint, the defendant filed a counterclaim and requested the cancellation of Maherlo's trademarks due to lack of distinctive character.
Assessing the validity of Maherlo's trademarks, the Madrid commercial court said that the expression "más altos" (or in singular, "más alto") to identify height elevation shoes was "clearly descriptive of the essential functionality of the product". However, given that the trademarks consisted of a joint use of the expression and a specific graphic representation, the court found them valid, although with a limited distinctive character which "shall not entitle the owner to prohibit third parties to use the descriptive elements". As a consequence, the court declared, while Maherlo could not prevent a third party from using the two separate words "MAS ALTOS", the use of the expression "MASALTOS" as such could indeed constitute a trademark infringement.
As for the defendant's use of Maherlo's trademarks as keywords in Google's AdWords as well as metatags the court referred to the CJEU judgments in Google v. Louis Vuitton of 23 March 2010, and in L'Oreal SA et al. v. eBay International AG et al. of 12 July 2011. The court concluded that the defendant's use of Maherlo's trademarks as keywords in Google's AdWords had to be considered as use of the trademarks for the purposes of article 34 of the Trademarks Act (ius prohibendi), even though the signs were not used identically. The same applied to the use of "MASALTOS" in the metatags of the defendant's website. According to the court, the defendant's use diminished the distinctive function of Maherlo's trademarks as it hardly allowed the Internet user to determine whether the advertised products' origin was of the trademark owner or a third party. The court concluded that by using the expression "MASALTOS" the defendant infringed Maherlo's trademark rights.
As a result, the court ordered the defendant to cease the infringing use and to delete the expressions from the website traffic, including from any advertising. It also awarded, without the need to prove them, damages equivalent to 1% of the volume of sales made by the defendant.
The judgment has not yet become final and might still be appealed before the Appeal Court of Madrid.