On July 3, 2012, Division 2 of the Federal Court of Appeals reversed an injunction issued against Google Inc. and Google Argentina S.R.L. in connection with the unauthorized use of a registered trademark ("Los Grobo Agropecuaria S.A. v. SOLO10 COM S.A. et al on injunctive proceedings").
Los Grobo Agropecuaria S.A., owner of the trademark registrations for GRUPO LOS GROBO in classes 35 and 36, detected the unauthorized use of its brand on the website www.crediagro.com. The company sought injunctive relief against the website registrant, the website host and Mercadolibre S.R.L. In addition, the plaintiff moved for an extension of the injunction against Google Inc. and Google Argentina S.A., as owners of the search engine that directed users to the infringing site.
The court of first instance granted the injunction, ordering Google to remove the plaintiff’s trademarks from suggested results that could direct users to any and all websites linking the plaintiff to Crediagro S.A.
Google Inc. and Google Argentina S.R.L. challenged the decision that was ultimately reversed on appeal.
In so deciding, the Court of Appeals held that an internet search engine’s activity does not amount to a trademark use capable of infringing the exclusive rights of a registered trademark holder. In addition, the Court of Appeals ruled that the injunction granted by the court of first instance was excessively broad, in that it forced Google to monitor the contents of all websites that referred to the plaintiff’s trademarks in any way. Lastly, the Court pointed to the differences between the case at bar and other precedents where injunctions against internet search engines were affirmed, namely that here there were no intimacy or privacy issues at stake.
This case reinforces a rule that has been established in this district: anyone seeking an injunction to block the access to an allegedly infringing content bears the burden of clearly identifying the relevant websites.