This paper explores the underlying advantages, risks and issues in view of the decision of the French Supreme Court of Appeal of 14 May 2013 and the Paris District Court's order of 20 June 2013
By way of an order and a judgment, the French jurisdictions have recently brought new insights on whether or not IPR owners should monitor their trademarks amongst Google AdWords, bearing in mind here that the legal ground is a true minefield.
In the first case ever submitted to the French Supreme Court of Appeal (Cour de cassation) on 14 May 2013, the Court sanctioned Sogelink - the owner of the "DICT.FR" trademark - for acting against advertiser Sig-Image without first checking that their action was well founded. Sogelink had in fact discovered that Sig-Image had reserved a keyword including Sogelink's "DICT.fr" trademark without permission, to promote their related activities. Then Sogelink had filed a claim against Sig-Image and concurrently used the Google service that allowed them to notify the US company of their prior rights on the trademark concerned, as well as the infringement of their rights as a result of the detected AdWord advertisement. Google accepted Sogelink's request and removed the Sig-Image that had given rise to the claim. However, Sig-Image went to court and secured the conviction of Sogelink. The Supreme Court of Appeal found that "in obtaining from Google that it would remove Sig-image's referencing on the Internet, Sogelink unduly deprived Sig-Image of a means of accessing a customer base to offer their online form-filling service; and from such grounds and appraisals, and without reversing the burden of proof, the Court had deduced that Sogelink had been guilty of misconduct, for it had deprived Sig-image of the possibility of generating substantial sales, and legally justified its decision."
This decision of the Supreme Court of Appeal is perfectly in line with the latest EUCJ orders ruling on AdWords on the Internet, and particularly the orders of 23 March 2010, which responded to the interlocutory questions the Supreme Court of Appeal had raised before the Community authority in the Louis Vuitton vs. Google cases to determine to what extent a trademark owner could object to the reservation of AdWords using their trademark, and the Interflora order of 22 September 2011 which the following year further specified the reasons for this jurisprudential stance that tended to safeguard the principle of free competition.
So, with this particular case, the Supreme Court of Appeal reasserted the conventional principle which holds that "no one should be able to rely on a right arising from fixed case law", and remarked that "considering that changes with respect to case law are for the judge to decide in applying the law, Sogelink may not rely on a right arising from fixed case law if Sogelink does not claim that it has been deprived of the right of access to courts" to dismiss the arguments Sogelink put forward to demonstrate that they had acted in good faith - at the time the advertisement was detected - in using the Google notification service specifically dedicated to cases of infringement of trademarks by AdWords.
The second case that was submitted to the District Court of Paris on 20 June 2013 involved Isabel Marant, a French group specializing in ready-to-wear clothing, and US company iOffer, which offers web browsers a platform to exchange and sell miscellaneous items, including clothes and fashion accessories (www.ioffer.com). The Isabel Marant group had observed that a number of commercial advertisements used their trademark without their authorization and had been put on line by loffer on loffer's own website. These ads redirected web surfers towards fashion items that seemed to counterfeit a number of items created and marketed by the Isabel Marant group. Following such discovery, the French group gave formal notice to Ioffer, asking them to stop using commercial advertisements the group considered as infringing upon its rights. Failing any satisfactory response from the US firm, Isabel Marant turned to the District Court of Paris on the ground of infringement under copyright, trademark and design law.
However, during the proceedings the parties reached an amicable arrangement and finally submitted a transactional settlement to the Court for approval. Under said settlement, the US firm undertook to set up an alert system for the "Marant" and "Isabel Marant" keywords, thereby allowing the French group to verify the authenticity of the products sold by the platform users and, as the case may be, to notify loffer of any advertisement Isabel Marant would consider as an infringement of their rights, so that the details of the incriminated ads would be transmitted to their Counsel for removal from the platform.
While such an agreement between an advertiser and a trademark owner certainly is commendable, and in the case of interest constitutes a satisfactory solution for the trademark owner who felt helpless, following the latest evolutions in court decisions regarding AdWords, it can also be argued that the second option made available to the Isabel Marant group under the agreement, whereby the group could order its counsel to obtain the removal of any ads the French group would consider as infringing upon its rights, is totally contradictory to the solution the Supreme Court of Appeal adopted on 14 May 2013.
It is in fact very clear, from the order of the Supreme Court of Appeal, that a trademark owner becomes liable to the author of an advertisement if such owner decides unilaterally to request the removal of the ad on the ground that it infringes upon its rights, based on the principle of free competition, which provides that a player on the market cannot prevent any competitor from making a profit from identical and/or similar products and/or services.
So, reading across these two recent decisions by French courts, what key points should we keep in mind?
First it is undoubtedly advisable for a trademark owner to monitor his trademark amongst Google AdWords. However, it is also necessary to concurrently keep a watchful eye on the respective jurisprudence, so as to determine the most suitable response strategy to follow in case any annoying advertisement is detected.
Concerning the latter point, defining a response strategy first implies considering the following issues:
- Does the detected ad allow web browsers displaying average attention to distinguish the origin of the products? (Are the products offered by the associated trademark owner or by a third party?)
- Can trademark owners invoke circumstances they feel may pose a risk of confusion between their website and the website of the said third party who reserved the AdWords? (This point could advantageously be supported by a bailiff's affidavit following formal observation on the Internet and by additional testimonies from customers)
- Can the owner of the trademark concerned argue that their customers are being subjected to abusive solicitation by the third party who reserved the AdWords? In fact, it will be necessary to try and determine whether such solicitation is coupled with any unfair acts, as active customer-seeking cannot be objected to the competitor per se, and is rather part of the competitive game between the various players on a given market.
Finally, and in any event, if the owner of the trademark that is used in the detected AdWords advertisement decides to respond, it will be necessary to make him fully aware of the risks associated with any unilateral decision to use the claims system set up by Google, which unfortunately remains accessible to date (https://support.google.com/adwordspolicy/answer/6118?hl=fr) and would unduly convince him of the validity of his approach.