According to the Court of Milan the use of a trade mark registered by a third party as a keyword to target customers through the Internet, is not to be regarded as an unlawful behavior.In the case at hand (order of the Court of Milan of 14.12.2015) the green light was given by the Milanese court to Apple Inc.
The contentious matter
The renowned manufacturer of iconic products such as the iPhone and the iPad, in 2015 launched a new product on the world market, a wrist watch, obviously electronic, operating with the functions of a modern personal computer: surfing the Internet, conducting research on the net in front of a simple voice command, managing information for the realization of a fitness program, and so on.
The new product was intended to be named as “iWatch” to follow the tradition of coupling of the letter “i” with the common names of objects, which have long been adopted by Apple to brand the highly successful family of products ( “iPod” ” iPhone “,” iPad “).
But when Apple tried to record the trade name, it turned out that the sign was already registered as a European trademark by another company, Probendi Ltd., which operates in the software industry and had chosen such a tradename to distinguish their own product, a safety system to report, through the user’s portable phone, a danger or emergency situation to an operations center.
After having tried in vain to buy the brand from Probendi, Apple launched the product with the trade name “Apple Watch”, but decided to use the name “iWatch” as keyword on the Google search engine to convey the contacts of those persons who initiate a search of said engine, just by typing the term “iWatch” to the site www.apple.com.
Probendi Ltd. in turn decided to sue Apple asserting the improper use of its registered trade mark.
The use of third party trade marks as keywords is not unlawful
Probendi Ltd. complaints have been dismissed by the Court of Milan who, by recalling the jurisprudence of the European Court of Justice (C-323/09), made it clear that the law protects the registered trademark only in relation to its typical function, which it is to ensure the consumer the origin of the product or its quality.
In the case at hand the Court found that Apple’s use of the name “iWatch” was not intended to distinguish the product on the market, in fact the sign does not appear neither on the Apple web site nor in other advertisings of the Apple’ product; in addition the Court noticed that the products of both companies are substantially different from each other.
On this basis it rejected the argument that the use by Apple of Probendi’ registered trademark as keyword in the Google search engine, was unlawful, since it is instead unsuitable to determine confusion among the public as to the origin of the same product. Indeed, the internet user reasonably informed and observant is able to distinguish whether the product or service to which the announcement relates, originate from the proprietor of the trade mark or an undertaking economically connected to it or is a third as completely extraneous.
The distorting effect of the contacts in the internet
The Court also dismissed as unfounded the further complaint of Probendi, which has challenged that Apple’s conduct was likely to prejudice the advertising function of the trademark. The tribunal found that the bad positioning of the site of the applicant in the context of the natural searches performed by search engines, certainly depended on several factors, largely not be influenced by the behavior of the counterparty.