Facts
Decision
Comment


The owner of a trademark can prohibit the use of its trademark on Google's AdWords system to promote certain products or services on other websites if such use constitutes an infringement of trademark law. The Court of Appeals recently decided to extend the scope of a precautionary measure that ordered a party to cease using the plaintiff's trademark through Google AdWords, regardless of the country from which the links of the promoted website were accessed.(1)

Facts

Geniver SAS requested that the following parties cease all use of the trade name and trademark PAMPA DIRECT:

  • Podios SRL – the owner of "www.argentinow.com"; and
  • Mr Rodolfo J Rossi – designated on the Google platform as the person responsible for the use of the designation.

Geniver alleged that the parties had used the trademark to promote Podios's online portal and divert customers. Geniver stated that when conducting a search for "pampa direct" on Google, the first result among the sponsored links was that of Podios.

Prior to issuing a precautionary measure, the judge pointed out to the plaintiff that the docket could not verify the trademark infringement based on searches for "pampa direct" on Google. However, the judge granted the request to produce early evidence and ex officio ordered Google to report on the defendants' or third parties' use of the designation "pampa direct" in its AdWords advertising system.

Geniver verified through a notary that the site "www.argentinow.com" continued to appear as the second result when searching for "pampa direct", accessed from both a foreign internet protocol address and an Argentine internet protocol address. When searching from an Argentine internet protocol address, an ad popped up, followed by the expression "pampa direct argentine products to the world", associated with the defendant's site. Therefore, Geniver requested that the judge issue a precautionary measure.

Decision

The first-instance judge ordered the cessation of the use of the sign PAMPA DIRECT on the Internet as part of any link to Podios's website, referring exclusively to its use in Argentina.

The plaintiff appealed the decision, requesting that the precautionary prohibition be extended to the use of PAMPA DIRECT in Podios's ads, regardless of the country in which the search that allowed access to the link was carried out, and not only limited to Argentina.

The plaintiff pointed out that the judge had not understood the activity carried out by both companies, which consisted of online purchases and sales of Argentine products from abroad, a service that was offered, disclosed and supplied locally. The plaintiff maintained that it would be complex and expensive to also have to litigate in the rest of the countries in order to avoid the appropriation and unauthorised use of the sign.

The Court decided to modify the scope of the precautionary measure. It found that since the case involved e-commerce and both parties were Argentine companies that offered similar services on their websites, the effects of the use of the plaintiff's sign in the defendant's ads occurred in Argentina, despite the location of the web traffic. Therefore, it decided that "there are no reasons that justify the inclusion of the plaintiff's trademark in the advertisement in question".

Consequently, the Court ruled that the defendants had to refrain from using the sign PAMPA DIRECT on the Internet as part of any link to access their website, regardless of where the user accessed it through Google. The Court also held that a statement on the existence of unfair competition cannot be ruled on – in Argentina – without the counterparty having been heard.

Comment

Because the Court issued a provisional measure, the plaintiff must now initiate a cease-of-use trial in order to confirm it. As yet, there are no records of a substantive action on the public consultation page of the national judiciary.

For further information on this topic please contact Julieta Pérez Espinosa at Ojam Bullrich Flanzbaum by telephone (+54 11 4549-4900) or email ([email protected]). The Ojam Bullrich Flanzbaum website can be accessed at www.ojambf.com.

Endnotes

(1) Geniver v Podios (Cause No. 10768/2021/CA1), CCCF, Chamber I.