Collections of court decisions. Keywords and trademarks

    From time to time, the courts consider cases of such a category as the use of trademarks as keywords (in Russia, so far, it is only about using Yandex.Direct and Google AdWords services, although services such as Baidu Paid Search are also involved in this overseas , Ebay and others). The article discusses some significant cases for Russian and foreign judicial practice, which give some idea of ​​what can actually be behind such a use of keywords.



    Date of decision: December 13, 2012
    Link to decision:
    Claimant: LLC “MEGA GROUP”
    Respondent: LLC “PS ELECTRIC”
    Keywords: “Contact”
    Commodity signs: the plaintiff owns TK "CONTACTICA CONTACTICS" according to certificate No. 341280
    Court decision: the claim was denied

    The lawsuit was filed because the defendant, according to the plaintiff, illegally uses his registered trademark on the Internet under the domain name www.pc- , and also uses it as a keyword for its ads in the Yandex.Direct advertising service .

    The court concluded that the indication of a trademark as a keyword in the Yandex.Direct service is not a use of a trademark for the following reasons.

    Keywords are not part of the advertisement itself, are not included in its content and are not shown to users. In this regard, users do not have information on which keywords the advertisement shown to him by the Yandex.Direct system is placed, and also cannot correlate a specific advertisement with specific keywords. As can be seen from the case materials, it is such an indication of a trademark that is not pursued by the individualization of goods by advertisers in the Yandex.Direct service, for technical purposes, and cannot lead to a mixture of goods (services).
    Consequently, keywords in the Yandex.Direct service cannot have an individualizing ability in relation to any goods, services or persons.

    Thus, an indication of a designation similar to the extent of confusion with the trademark of the plaintiff as a keyword cannot be recognized by a court using, in the sense of Art. 1484 of the Civil Code of the Russian Federation, as it does not individualize any goods, or the advertiser itself; does not create the possibility of mixing the goods of the plaintiff and the advertiser; is one of the technical criteria for displaying an advertisement in the Yandex.Direct service.

    In addition, the plaintiff did not prove that PS ELECTRIC LLC is the proper defendant in the case, the person who posted the plaintiff's trademark as keywords in the Yandex.Direct Service. The plaintiff did not provide any evidence confirming that the placement of advertising materials indicating the trademark as a keyword in the Yandex.Direct Service was carried out precisely by the defendant.

    Note: the first trial in this case was in 2011, when the trial court found the actions of the defendant as a violation of the rights of the plaintiff. The appellate court quashed the decision of the court of first instance, but refused the claim . The cassation court overturned the previous decision and order and sent the case for a new consideration, which took place on December 13, 2012, and the text of the decision of which has already been set forth above.

    2. KM-Elite LLC vs CJSC Home Products

    Date of the decision: 04/09/2013
    Link to the decision:
    Claimant: KM-Elit LLC
    Defendant: Home Products CJSC
    Keywords: “madam mu”
    Trademarks: plaintiff belongs to TZ “Madam” Mu "according to certificate No. 346933
    Judgment : the claim is denied

    The lawsuit was filed because, according to the plaintiff, the defendant used the trademark of the plaintiff “Madam Mu” as the same name to “search for access to the respondent’s website“ vse-svoe ”. In addition, the plaintiff also referred to the fact that the defendant’s website offered goods that were similar to the classes of which his trademark was registered. Thus, the plaintiff believed that such use violated his exclusive rights to the said trademark.

    In considering the case, the court concluded that the keyword does not accurately identify any advertisement, person or product. This fact, as well as the lack of the ability of keywords to individualize, is confirmed, inter alia, by the evidence presented by the plaintiff - notarized inspection protocols. After introducing the keywords “madam mu”, search engines returned a search result - a list of possible resources, including those not related to the activities of the defendant.
    Thus, the court concluded that the indication of the plaintiff’s trademark as a keyword was not the use of a trademark within the meaning of Art. 1484 of the Civil Code of the Russian Federation, and also was not a special case of such use - another way of addressing on the Internet.

    Note:The higher authority (9th AAS) upheld the decision of the first instance. KM-Elite LLC filed a cassation appeal; therefore, the case is currently pending before the Intellectual Property Rights Court.

    3. Advanced Processing Technologies LLC vs Terradek LLC

    Date of the decision: 04/26/2013
    Link to the decision:
    Claimant: Advanced Processing Technologies LLC
    Defendant: Terradek LLC
    Keywords : newwood
    Trademarks : the plaintiff belongs to Newwood TK by certificate No. 462705 valid until 10/22/20, according to certificate No. 462706 valid until 10/22/20
    Court decision: the claim is denied

    The plaintiff is the copyright holder of TK Neewood. In support of his claim, the plaintiff claimed that when the “newwood” query was entered into the Yandex search engine, links to a number of resources appeared, in particular to the respondent’s website According to the plaintiff, the defendant's use of the keyword to search for “newwood” violated his exclusive right to the trademarks of “newwood”.

    The court ruled that using a phrase similar to a registered word trademark as a keyword for searching the Internet cannot be equated to using a trademark.

    Each method of using a trademark in the sense of Article 1484 of the Civil Code of the Russian Federation is limited by a single principle of such use: the implementation of the use of a trademark in order to individualize goods, i.e. imparting distinctiveness to a product or manufacturer in order to prevent the mixing of goods.

    The keyword is a technical parameter defined by the advertiser, which indicates this parameter through the appropriate tincture tools in online advertising systems. A number of keywords can be selected for each ad. At the same time, keywords for searching information from different advertisers may coincide. The user is not informed as to which keywords he can get access to information of interest to him. Therefore, when entering a keyword, the user receives a number of links to possible resources for which the corresponding keyword is selected.
    Therefore, keywords cannot be attributed to the methods of using a trademark, given the lack of individualizing ability. The main feature that provides legal protection for a trademark when using keywords to search the Internet is missing.

    Thus, an indication of a designation similar to the point of confusion with the trademark of the plaintiff as a keyword cannot be recognized as being used in the sense of Art. 1484 of the Civil Code of the Russian Federation, as it does not individualize any goods, or the advertiser itself; does not create the possibility of mixing the goods of the plaintiff and the advertiser; is one of the technical criteria for displaying an advertisement in a search engine.
    Indication of a trademark as a keyword is also not its use in the form of another way of addressing on the Internet. This conclusion follows from a direct correlation of the general norm of Art. 1484 of the Civil Code of the Russian Federation with the method of use in the form of addressing.

    Note: The higher authority (9th AAS) upheld the decision of the first instance. Advanced Processing Technologies LLC filed a cassation appeal, so the case is currently pending before the Intellectual Property Rights Court.

    In Russia as a whole, it can be said that the jurisprudence in such disputes is still relatively small, which is partly why the texts of court decisions contain identical wording regarding explanations of the nature and function of keywords, as well as the existence of a unified position that the use of trademarks in as keywords in advertisements does not fall under the use of trademarks in the sense of Article 1484 of the Civil Code of the Russian Federation.

    Further, I suggest that you familiarize yourself with how such matters are in other countries and courts.

    Great Britain

    4. Interflora Inc. vs Marks & Spencer plc

    Decision date: 22.09.2011
    Link to solution:;jsessionid=9ea7d0f130d5cd0e63c6637446fdb161c5933cfc2a4b.e34KaxiLc3eQc40LaxqMbN4OahqSe0?text=&docid=109942&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=168339
    Claimant: Interflora Inc., Interflora British Unit
    Defendant: Marks & Spencer plc, Flowers Direct Online Ltd
    Keywords: “Interflora Flowers”, “Interflora Delivery”, “”, “interflora co uk”, etc.
    Trademarks: plaintiff owns TK INTERFLORA
    Court decision: the defendant violated the plaintiff's rights to his trademark

    The plaintiff is a large network for ordering and delivering flowers, which owns the trademark of the same name. Defendant is a well-known UK retail chain with a wide range of products that provides its services through its own outlets and online. The defendant used the word “Interflora” for sponsored links in the AdWords advertising system in relation to its online floristic service. Sponsored links quietly used the word “Interflora”, which, as stated above, is a trademark of the plaintiff.

    In this case, the court ruled that the keyword by its nature is not an advertisement or always an undesirable phenomenon in relation to the trademark of the same name. At the same time, in this case, the plaintiff’s rights were violated because the defendant did not provide a reasonable number of well-informed and observant users with information that the defendant’s flower delivery service is not part of the plaintiff’s similar service.

    The court concluded that:

    1. A well-informed and observant user, as a rule, did not realize in May 2008 (and at the time the case was examined in court) that the defendant’s flower delivery service was not part of the plaintiff’s similar service.

    2. None of the defendant’s advertisements contained information that the respondent’s service was not part of the plaintiff’s similar service.

    3. The essence of the plaintiff’s service, which allows users of the service to trade under their own names, has made the assumption that the respondent’s service is related to the plaintiff’s service even more plausible.

    Therefore, the court ruled that the use by the respondent as an advertiser of the plaintiff’s trademark as a keyword for advertising his own services is the use of the plaintiff’s trademark in the field of trade in relation to his own products and services.


    5. Google Inc. vs Louis Vuitton Malletier SA

    Decision date: 03/23/2010 Decision
    Claimant: Google France SARL, Google Inc.
    Defendants: Louis Vuitton Malletier SA, Viaticum SA, Luteciel SARL, CNRRH Pierre Alexis Thonet Bruno Raboin Tiger, a franchisee of Unicis
    Keywords: words belonging to the defendant (in particular, “Louis Vuitton”, “LV”), as well as the phrase with them words such as “imitation”, “replica” and “copy”
    Trademarks: “Louis Vuitton”, “LV”
    Court decision:1) the trademark owner has the right to prohibit the use of his trademark as a keyword for advertising purposes, 2) the service provider for advertising links (in particular, Google) is not responsible for the storage and display of advertisements for keywords in the sense of art. 5 (1) and (2) of the Trade Marks Directive and Art. 9 (1) of EU Council Regulation No. 207/209, 3) the provider of services for sponsored links (in particular, Google) is not recognized in any case as responsible under the reservation of the hosting art. 14 of the Directive 2000/31 / EC (the E-commerce Directive), if he does not play an active role, which he may have as a result of knowledge or management of the data stored by him.

    In early 2003, Louis Vuitton became aware that the Google search engine displayed links to its users under the heading "Sponsored Links" to sites that sell imitations of Louis Vuitton products. It has been found that Google allows its advertisers to use as keywords not only words that are trademarks of Louis Vuitton, but also phrases that include trademarks of Louis Vuitton and words such as “imitation” and “copy”.

    In this regard, Louis Vuitton filed a lawsuit against Google over the fact that Google violates the rights of the plaintiff to its own trademarks. The Paris Regional Court found Google guilty of violating Louis Vuitton's trademark rights. The Court of Appeal of Paris upheld the decision of the trial court. Google has filed a cassation appeal against the court’s decision. In this regard, the Court of Cassation of France decided to suspend the proceedings and sent questions of law to the European Court for consideration in this case.

    The court ruled that when a third party uses a mark that is identical or similar to the trademark of any copyright holder, it is assumed at least that this third party uses this mark in their own commercial communications. The specified service provider (meaning Google) allows its customers, namely advertisers, to use signs that are identical or similar to trademarks, but at the same time, he does not use these signs.

    The court also ruled that courts considering such cases should find out whether the role of the service provider is neutral or not (meaning that its actions in such cases are mostly technical, automatic and passive measures, indicating a lack of knowledge, and also control the data that it stores).

    If it is proved that the provider did not play any active role, therefore, he cannot be held accountable for the data that he stores at the request of the advertiser until he becomes aware of the illegality of the data itself or the actions of the advertiser and if he will not promptly delete such data or make it inaccessible.

    6. Cobrason vs Google Inc., Google France, Solutions

    Decision date: 01/29/2013 Decision
    Claimant: Cobrason
    Defendants: Google Inc., Google France, Solutions
    Keywords: Cobras »
    Trademarks: the plaintiff owns the Cobrason trademark
    Court decision: refuse to satisfy the plaintiff's claims

    The plaintiff and the defendant are online services for the sale of video and Hi-Fi equipment, being direct competitors to each other. The plaintiff owns the trademark "Cobrason". In his lawsuit, the plaintiff indicated that when searching in the search engine “cobrason”, as a result of search results, an advertising link to the respondent’s website appears, which is displayed in the form of the text: “Why pay more?”. That is why the plaintiff sued Google Inc., Google France and Solutions, which, in his opinion, carried out unfair competition and showed consumers misleading advertising using the Adwords service.

    During the trial of this case on May 11, 2011, the Paris Court of Appeal excluded Google France from the list of co-defendants. This court found the remaining two co-defendants responsible for unfair competition and misleading advertising and awarded 100,000 euros for damages to the plaintiff.

    However, in its decision of January 23, 2013, the French Supreme Court quashed the decision of the Court of Appeal of Paris for three reasons.

    1. The provision of the court order under which Google Inc. was canceled technically facilitated acts of unfair competition committed by Solutions. According to the French Supreme Court, the Paris Court of Appeal should have taken into account the argument that Google Inc. should have been subject to the limited liability regime of hosting service providers, as defined in Section 6-I-2 of the Act of June 21, 2004 on Confidentiality in the Digital Economy (LCEN). Thus, the French Supreme Court ruled in accordance with the interpretation adopted by the Court of the European Union on March 23, 2010 in the AdWords case (C-236/08 C-238/08, Google Inc., Google France vs. Louis Vuitton Malletier and others. )

    2. In order to establish unfair competition, the French Supreme Court ruled that the Paris Court of Appeal should establish the risk of confusion between the sites of the plaintiff and the defendant. By doing so, the French Supreme Court indirectly affirmed that the fact that Solutions had used the plaintiff’s trademark as a keyword was not in itself sufficient justification to recognize the actions of the respondent as an act of an unfair conference. Unfair competition does not arise until there is a risk of misleading the average Internet user. In addition, the French Supreme Court noted that the imposition of one’s own services on a competitor’s customers is not an offense in itself until such unfair conduct is established.

    3. The French Supreme Court also ruled that neither displaying the respondent’s link to his website, nor a message with the text: “Why pay more?” Are not sufficient to establish the fact of misleading advertising or the risk of confusion for the average Internet user in relation to the two companies regardless of whether they are interconnected by economic ties or not.

    Therefore, the decision in the case was made by the court in favor of the defendants. Thus, the decision of the French Supreme Court clearly corresponds to the interpretations adopted by the Court of the European Union, which contribute to the development of competition. If it is now clear that the company has the right to use the competitor’s trademark as a keyword in the services of advertising links, at the same time, one should not forget that in this matter one must be extremely careful in order to avoid misleading the average Internet user.


    7. Rosetta Stone Ltd. vs Google Inc.

    Date of the decision: 04/09/2012
    Link to the decision:
    Claimant: Rosetta Stone Ltd.
    Defendants: Google Inc.
    Keywords: ROSETTA STONE
    Court decision: cancel the previous court decision and return the case for new consideration

    Plaintiff is a manufacturer of language learning software. The lawsuit was filed in 2005 with the defendant because his AdWords service allowed third parties to use the plaintiff’s trademarks 1) as keywords in advertisements, 2) in the form of headings and texts of advertisements on the respondent’s website to mislead consumers , and thereby allowed third parties to appropriate the plaintiff's trademarks.

    The District Court of Virginia in 2009 decidedthat the use by a third party of a trademark is not a misrepresentation of consumers. The plaintiff filed an appeal, and the case was examined by the Fourth Circuit Court of Appeal. The court revised the lower court’s decision on three grounds for the suit of Rosetta Stone Ltd. - in relation to direct infringement, facilitating infringement, weakening of a trademark (i.e. the use of a trademark in such a way that its identification function is weakened - when a trademark ceases to be unambiguously associated with a specific manufacturer) .

    1. Direct violation - the Court took into account the plaintiff’s statement that the defendant provided sponsored links to counterfeit copies of the plaintiff’s software to their users, while they themselves believed that such links lead to official reseller sites, and thus they acquire legal products.

    The court also took into account the fact that, according to Google’s internal research conducted by its specialists until 2004, it was found that “the risk of such confusion is very high” when a trademark is used in the title or content of an advertising link, and that because of this practice, 94% of users were misled at least once. Moreover, evidence was presented that two Google employees were unable to determine (without further research) which sponsored links on the search results page lead specifically to the plaintiff’s official reseller sites, reflecting uncertainty about the legality of the products offered by such sponsored links.

    2. Contributing to the violation - the Court determined that the plaintiff’s complaint regarding the facilitation of the violation (which is the knowledge of one person that his actions contribute to the commission of unlawful actions by a third party) on the part of the defendant continues to be justified, because according to the plaintiff’s evidence Aware, he continued to sell keywords to infringers and distributors of counterfeit products.

    3. Trademark weakening - on this issue, the court rejected the plaintiff’s claim that the defendant, using the plaintiff’s trademark, thereby weakened his identification function. The court of appeal confirmed that the defendant did not use the plaintiff’s trademark to identify its own services. Moreover, the plaintiff’s claim that his trademark was weakened was rejected by the court due to the fact that public awareness of the plaintiff’s trademark increased after he appeared in the Adwords respondent system.

    Thus, the Court decided to cancel the decision of the previous court and send it for a new consideration.

    Note: however, in November 2012, the parties concludedamicable settlement, thereby ending the three-year litigation. The details of the settlement were not disclosed. With the joint announcement of this news, the parties noted that they were able to agree to terminate the litigation and plan to cooperate in the fight against advertising links regarding counterfeit products and the prevention of misuse and abuse of trademarks on the Internet.

    8. Network Automation, Inc. vs Advanced Systems Concepts, Inc.

    Decision date: 08.03.2011
    Link to solution:
    Plaintiff: the Network Automation's, Inc.
    Defendants: Advanced Systems Concepts, Inc.
    Keywords: ActiveBatch
    Trademarks: the plaintiff owns the AutoMate trademark, the defendant owns the ActiveBatch trademark
    Court decision: to cancel the injunction passed by the trial court

    The plaintiff and defendant are software manufacturers. Network Automation has decided to use the word “ActiveBatch” as the keyword for sponsored links to advertise its products. Advanced Systems Concepts has objected to this use, setting the stage for this lawsuit.

    As a result of the plaintiff’s decision, in the top of the search results for a relevant query for the word “AutoMate” there were links to the plaintiff’s site. In 2009, the defendant sent the plaintiff a written warning about the inadmissibility of continuing such a violation. By his second letter, the defendant made it clear to the plaintiff that, in his opinion, the actions of the latter constitute a violation of the defendant's rights to the trademark. The defendant threatened with a lawsuit, to which the plaintiff stated that his actions were not a specified violation, and therefore filed a lawsuit in order for the court to confirm the fact of non-violation of the defendant's rights by the indicated actions of the plaintiff (which is why Network Automation appears as the plaintiff and Advanced Systems Concepts as a defendant) , and the defendant, in turn, filed a counterclaim about the violation of his rights.

    The trial court imposed an injunction on the plaintiff. The court also noted that the plaintiff used an identical sign to advertise and sell their goods, which are competitive with the goods of the defendant, and both companies use the Internet as a channel for the distribution of their products. Since the sponsored links didn’t give a clear answer about which site they lead to, consumers could be misled.

    The plaintiff appealed against the injunction. The Ninth Circuit Court of Appeal quashed the decision of the trial court in the review of the case. The court ruled that any consumer who searches for “ActiveBatch” expects to receive a specific product as a result of the search, rather than a category of products. The court also ruled that the trial court only took into account the fact that the products of the parties to the lawsuit are interchangeable, but did not take into account the fact that both parties are direct competitors. The court confirmed that the plaintiff’s keyword “ActiveBatch” and the respondent’s trademark of the same name were identical. In addition, the court noted that consumers of expensive software are likely to understand the content of search results and advertising links, and thus there is a low probability that they can be misleading.

    As a result, the court ruled in favor of the plaintiff, repealing the injunction passed by the trial court.


    9. Google Inc. vs ACCC

    Decision date: 02/06/2013 Decision
    link: : //
    Claimant: Google Inc.
    Defendants: Australian Competition and Consumer Commission (ACCC)
    Keywords: “Harvey World Travel”, “Harvey World”, “”, “just 4x4s magazine”
    Court decision: plaintiff does not directly commit consumer misconduct , even if the sponsored links that broadcast on the plaintiff’s website make such content.

    Google displayed sponsored links to STA Travel, Carsales, Trading Post, and Ausdog. These sponsored links were shown to users when they searched for any of the competitors of these companies. The advertisers' intended purpose was to divert the target audience from the competitor or to present the situation in such a way that there is a business partnership between the advertised company and the competing company.

    The common ground for the lawsuit was that such links could be misleading, so the court was asked whether Google was involved in misleading consumers or cheating by displaying such links in its search engine.

    The trial court acceptedACCC’s position (which was the plaintiff in the first instance), recognizing Google’s actions as misleading to consumers when misleading advertisements are shown.

    Google filed an appeal, which was ultimately examined by the Australian Supreme Court. The Supreme Court ruled that Google does not create or produce any sponsored links. Google simply responds to a custom search query and acts as a means of communication between consumers and advertisers. This is because the technologies by which advertising links operate simply collect information provided by others to further display ads. Thus, Google (as well as the Internet as a whole) is no different from other advertising intermediaries, which also include newspaper, television and radio broadcasting.

    The Supreme Court concluded that a reasonable user of the Google search engine has an idea of ​​the difference between the direct search results and the block of advertising links. Those. such user understands that the text of the advertisement has been compiled by the advertiser and that Google does not directly endorse or approve the content of the text of the advertisement. This means that Google does not directly take actions to mislead consumers, even if sponsored links do so.


    1. In Russia, the use of a trademark of one person as a keyword by another person is not a violation of the exclusive right to a trademark. In satisfaction of such claims the courts will be rendered.

    2. However, the use of a trademark of one person as a keyword by another person is inherently closer to the fact of unfair competition. There is no Russian judicial practice in such claims yet, but it can be assumed that with this approach to keywords, the plaintiff has a chance of satisfying his claims.

    3. In Europe, the use of a trademark of one person as a keyword by another person may be considered a violation of the exclusive right to a trademark (United Kingdom).

    4. In US jurisprudence, the use of a trademark as a keyword can only be considered a violation in conjunction with other factors (in particular, there is a connection between the use of a trademark as a keyword and misleading consumers).

    5. The liability of service providers for sponsored links (for example, Google and its AdWords service or Yandex and its Yandex.Direct service) in accordance with national legislation is to some extent limited, because the actions of such providers to place keywords are not recognized as the fact of using a trademark (EU countries, Russia, Australia, USA) and are not a violation of trademark rights, unless otherwise specified in their actions (in particular, the intentional misrepresentation of consumers when showing similar advertising links or taking actions to weaken the trademark of this or that copyright holder).

    If anyone is interested to read more examples of such cases, I recommend that you familiarize yourself with an excellent selection of such court cases.

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