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The answer to the enounced question is YES. In the following lines we will briefly expose the limits set out by the case law of the Court of Justice of the European Union (CJEU), followed by the Spanish Supreme Court, for the use of the trademark of a competitor as keyword in internet search engines, so that when internet users enter the keyword, on the screen appears as advertisement a commercial message that redirects to the advertiser’s website (advertising link) when clicking on it.
Firstly, we shall explain in what the internet advertising system by reference consists of:
- By means of the internet search engine, free access to the same is provided to internet users, so that when entering the keyword, they get several results are that in the internet argot are named “naturals”. These results have been previously selected by the search engine’s company on the basis of the relation of the inserted terms with the keyword.
- At the same time, the search engine sets out an advertising system (that in the case of Google is named adwords) that displays, after introducing the keyword, and together with the natural results, advertising results. This advertisements appear on the screen with the corresponding link to the web page of the advertiser (advertising link) on top of the natural results of search.
Well, what happens when any of the keywords offered by the search engine to the advertiser for its selection is identical to trademarks or even well-known and reputed trademarks?
This issue has been addressed by several judgements of the CJEU and followed by the Spanish Supreme Court, among others, in its judgment of 26 February 2016 (Maherlo Ibérica, S.L. vs. Charlet SAM), based on the judgments of the CJEU of 23 March 2010 (joined cases -Google France vs. Louis Vuitton, Google France v Viaticum, and Google France vs. Centre national de recherche en relations humaines); 12 July 2011 (L’Oréal SA v eBay International AG); and 22 September 2011 (Interflora Inc. vs. Marks & Spencer plc).
According to CJUE’s case law, followed by the Spanish Supreme Court, the use of signs identical to word elements of the trademarks of a competitor as keywords, under the framework of the referencing service contracted with Google constitutes a use of another’s trademarks in the economic trade for goods or services, although it does not infringe functions of the trademark such as determining its origin, advertising or investment, resulting in an atypical use.
Therefore, another’s trademarks can be used as keywords in order to show sponsored links, always provided that the following conditions are met:
(i) that the use of the trademark does not impair neither its function of indicating the origin of the trademark nor its economic function, in the sense that the normally informed consumer and reasonably observant can determine whether the goods or services covered by the advertisement come from the owner of the trademark or an economically related company to the same, or if, on the contrary, they come from a third;
(ii) that it is clear for an average Internet user that the advertised products or services do not come from the owner of the trademark or an economically related company, so that the user has the true feeling that similar products are manufactured and sold by different companies that compete with each other in the same market segment; and if this is not the case, it is indicated under what circumstances the products of a certain trademark are sold through a webpage different to the “official” one.
To this end, another’s trademark used as keyword in the Internet search engines shall not appear neither in the title or text of the advertisement, nor in the domain name to which the advertisement links.
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