It gives me great pleasure to introduce this guest post from Mr. Arun Mohan. Arun completed his LLB from the London School of Economics (LSE) and is currently an associate with Mohan Associates, Chennai. His focus is primarily on IP and commercial litigation.
Dutch Court applies the ECJ Google ruling.
By Arun Mohan
There have been a string of judgements around the world, on the usage of registered trademarks by competitors in Google’s Adword program.
The Dutch Courts have been the first to apply the ECJ ruling on this issue. The ECJ on 23rd March 2010, in deciding 3 matters held a trademark owner can prevent a competitor from using his registered trademarks as a keyword in Google, only if a consumer would be deceived, misled or confused on account of such usage as to the origin of the goods or services. Google per se was relieved of any charge of infringement for storing and offering such registered trademarks as Keywords in its Adword program.
The mark in question was TEMPUR, used for mattresses and other “sleeping products”. This mark was being used by 2 competitors (Energy+ and Medicomfort) as an Adword, to attract customers to their site which did not offer any mattresses or other products made by TEMPUR. They further used the mark as a Keyword in Google and as meta-tag in their website.
Aggrieved by the diversion of traffic, TEMPUR pressed for infringement action against its competitors. The competitors claimed the same to be required for the purposes of lawful comparative advertising. However, Energy+’s advertising was held to be illegal as the advertisement does not make a clear distinction between the competitor’s products and those offered by Tempur. The Court’s therefore held that this would case the reputation of TEMPUR to be rubbed off on the products, which is illegal. The Court does not explore confusion in the minds of the consumer, as discussed in Google, and provides a significant addition to the standards for an action of infringement in such cases. Conversely, Medicomfort was found not to be liable, as its adverts clearly distinguished its products from those of TEMPUR, thereby providing no scope of confusion in the minds of the consumer. The issue of TEMPUR’s goodwill being attributable to Medicomfort was not discussed.
The case throws open many interesting issues. Firstly, what is comparative advertising on the internet? When confusion is possible as to the origin, does the advertisement still qualify as comparative advertising? The most interesting aspect is of course, the addition of the standard of reputation being wrongly attributable to a competitor.
I find that this case only highlights the ongoing confusion in this matter. At an aside, you may recall the ruling of Hon’ble Justice Ram Subramanian, Madras High Court in this regard. The ruling of the Madras High Court, may potentially be the only clear finding against Google across the world. A quick perusal of the order would reveal that the Court finds such usage of trademarks to be “commercial use” under the Trademarks Act, and hence actionable for infringement and passing off. However, in that case the court held that nature of the mark (Bharat Matrimony) being descriptive and essential to the trade, the injunction could not be granted. The Order significantly points out that an arbitrary trademark, not being generic or descriptive in nature, would be entitled to protection. The case is presently pending appeal.
Disclaimer: Arun Mohan appeared on behalf of Consim in its litigation against Google before the Madras High Court.
