The Google AdWords scheme allows advertisers to sponsor popular
search terms which, if entered by a user, will include the
sponsor's links beside the normal search results.
In Google France, located at Google.fr, the terms "bourse des
vols" (flight market) and "bourse des voyages" (travel market) were
available for sponsorship. However, travel agencies Luteciel and
Viaticum objected because they own the terms as registered trade
marks in France.
The companies sued in December 2002 when Google France refused
to drop the terms from its AdWords scheme. The travel companies
complained that rivals could use AdWords to exploit their marks.
The court was shown that the term "bourse des vols," for instance,
produced a number sponsored links, the top one being for Swiss
International Air Lines at swiss.com.
Google France argued that the terms were generic, that they were
not protected by valid trade marks, and that the issue was a
technological one that could not be resolve.
But the court disagreed with Google on all grounds. In an
opinion issued last Monday it ordered Google France to remove the
disputed terms from AdWords within 30 days. It ordered the company
to pay €70,000 in damages and €5,000 in court expenses, and to post
extracts of the judgment on its site for one month. It also
prohibited the company from profiting in future from such use of
the two marks on pain of a €1,500 fine per infringement.
According to Reuters, the ruling is the first in which a trade
mark owner has successfully sued a search engine over the practice
of allowing advertisers to use protected terms in text ads.
It may be the first case of its kind in France; but the English
High Court has already ruled on the practice in similar
circumstances.
The case concerned the recruitment site totaljobs.com which had
used another company's trade mark, "Reed," as a reserved term with
at least one search. The court ruled against the use of the mark in
this way and in its use as a web site meta tag.
Arguably the most controversial aspect of the Google case is
that registered trade marks are held in France for what many would
consider to be generic terms. If a search engine offered the word
"Nike" as a key word for sponsorship, and it was sponsored by
Reebok, for instance, few would be surprised if Nike successfully
took action.
The Google France
decision is available in French only.
