The use of a competitor's trade mark as a keyword

Carré Blanc is a group of companies specialising in the marketing of household linen. The group, via Carré Blanc Expansion, is the owner of the French trade mark CARRE BLANC No. 073534168 filed on 29 October 2007 and registered for numerous goods and services including in classes 24, 35 and 38.

Rue du Commerce, a company part of the Carrefour group, operates an e-commerce platform mainly to market high-tech products as well as other products, such as household linen, but not any of Carre Blanc's products.

Carre Blanc claimed that when an internet user conducted a Google search with the keywords "Carre Blanc" combined with a descriptive term, such as "sales" or "duvet", the website

www.rueducommerce.fr

appeared on the search results page, suggesting that Rue du Commerce sold "CARRE BLANC" branded products, whereas the platform did not market such products.

Depending on the keywords typed by the internet user, such a search led to a paragraph composed of a title, a URL link and an extract of the corresponding Rue du Commerce's webpage (namely, a snippet), including said keywords and the CARRE BLANC trade mark:

The snippets were based on the following structure: "To buy your [carré blanc + keyword] on sale at a non-expensive price and get the best price for [carré blanc + keyword]".

Carre Blanc filed an action for trade mark infringement, as well as for unfair competition amongst other grounds.

More specifically, Carre Blanc argued that there was trade mark infringement because of the reproduction of the CARRE BLANC trade mark in the titles, in the URL addresses and in the snippets of the texts appearing in the organic results, as well as on each corresponding webpage of the platform.

As a counterclaim, Rue du Commerce requested the cancellation of Carre Blanc's trade mark, based on lack of distinctiveness, arguing that it consists of two terms often used for household linen (ie the terms "carré", "blanc" meaning "white", and "square").

On 5 March 2019, the Paris Court of Appeal rejected the defendant's counterclaim, considering that the distinctiveness of a trade mark should be globally assessed and that, in the case at hand, the term "CARRE" is not necessarily or often used to designate household linen, which are often constituted of a rectangular shape. Thus, the combination of the two terms is distinctive.

Regarding the infringement claim, the appellate judges first stated that:

"...the use of a sign reproducing the trade mark in the context of organic listing may be prohibited if it suggests the existence of an economic link between the third party and the holder of the trade mark, in this case between Rue du Commerce and Carré Blanc, and more especially as the level of attention of the normally attentive Internet user must be assessed in consideration of the fact that this is an organic and not a paid listing system, and that such a system enjoys greater credibility from the Internet user, who will therefore pay less attention than for a paid listing".

The court then held that the terms "CARRE" and "BLANC" of the claimant's trade mark were used by Rue du Commerce in the course of trade, and that the goods at issue were identical or similar.

The judges thus concluded that the reproduction of the claimant's trade mark in the titles and in the URL addresses, as well as in the snippets, undermined the trade mark's "function of indicating origin", as it is likely to leave the normally informed and reasonably attentive internet user to believe that Carre Blanc's products will be offered on the platform.

Regarding the claims based on unfair competition, the court held that:

"...the implementation of listing techniques in order to promote the webpages of the Rue du Commerce's website having the carré blanc title and to improve its ranking in the best results of the Google search engine is a commercial approach to highlight these products and to approach customers, and can only lead to an unfair behavior if it has the effect of effectively diverting consumers from the competing company of  Rue du Commerce (ie Carre Blanc), which would suffer a loss of its turnover".

Here, the court held that the defendant did not commit unfair competition acts, considering that the listing system put in place through internal linking did not necessarily place the Rue du Commerce's website in the first rank of the organic search results.

Furthermore, the appellate judges considered that Carre Blanc did not show the link between the e-commerce platform's internal linking and the loss of its turnover.

This decision is in line with the French case law, and confirms the great protection given to trade mark owners.

Case Ref. Paris Court of Appeal, 5 March 2019 – case No. 17/13296: Carré Blanc vs. Rue du Commerce