In re “Teve Compras 2001 SRL v. Sprayette S.A. on precautionary measures”, on May 15, 2012 Division 1 of the Federal Court of Appeals issued an interlocutory ruling suggesting a possible interpretation about the use of trademarks as “adwords”.
Teve Compras 2001 SRL (Teve Compras) had requested the court to order Sprayette S.A. (Sprayette) to stop use of the mark “TEVECOMPRAS” alleging that it was used to promote its web site and mislead clients. Teve Compras argued that when searching for TEVECOMPRAS in www.google.com.ar, Sprayette was the first result in the pay-per-click links.
Upon this request, the trial court issued a preliminary injunction ordering Sprayette to stop “using the name TEVECOMPRAS in any distinctive function”. This ruling was not appealed.
Later on, Teve Compras informed the court that the preliminary measure was being violated as by entering the trademark “TEVECOMPRAS” with any other additional character or word, Sprayette continued to be the result brought by the pay-per-click links.
The trial court rejected plaintiff’s request as, in the court’s opinion, “demanding the defendant to block of the pay-per-click links accessed through Google Inc.’s search engine implies modifying the scope of the measure issued by the court”.
Teve Compras filed an appeal and argued that the second infringement reported was identical to the first but that it was the court which had deviated from their initial preliminary injunction.
Despite the above, the Court of Appeals affirmed the trial court decision and made several statements of interest.
The court confirmed that the infringement reported was the same informed to the court when requesting the injunction. The court noted, however, that the extent of the injunction, which had not been questioned by Teve Compras, set the course of the decision, and when evaluating the infringement, the court concluded that “TEVECOMPRAS” had not been used in a distinctive manner.
The court also pointed out that there were no sufficient grounds to prove the requisites of likelihood of sufficient legal basis and imminent danger. Basically, the court concluded that:
- the evidence submitted by Teve Compras was not enough to prove the use of the mark TEVECOMPRAS in Sprayette’s pay-per-click links; and
- there was no evidence showing that clients would actually be misled into the adversary’s web page.