13 juillet 2022
The use of a competitor’s trade mark as a Google Adword can be prohibited under Benelux trade mark law even where the advert displayed does not mention the trade mark in any way.
River Cruise Rotterdam registered a competitor's trade mark, SPIDO, as a Google Adword.
Spido offers river cruises in and around the Rotterdam harbour. It owns the word mark and several device marks for “SPIDO”. River Cruise Rotterdam offers identical services under the trade name “River Cruise Rotterdam”. River Cruise Rotterdam registered “spido” as a Google Adword. On searching for “spido” on Google, the following advert appeared (translated from Dutch):
River cruise Rotterdam – The Rotterdam harbour cruise
Our live guide tells you all about container ships, the history and the past. The cruise through Europe’s biggest harbour. 5 star rating. Book online now. River Cruise: 1 hour. Harbour cruise: 1,5 hours. Skyline from the water. All R’dam harbours.”
River Cruise Rotterdam also used other adverts in which the trade mark SPIDO was visible, which it acknowledged constituted trade mark infringement. However, that use had ceased before the proceedings were filed. The current proceedings dealt with the question of trade mark infringement even though the SPIDO mark was not visible in the advert.
According to the judge, the advert resulted in trade mark infringement based on the ECJ's case law (C-236/08, Google/France and C-323/09). The ECJ in these cases had said that, using a competitor's brand as an Adword can comprise trade mark infringement when that advert does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. Furthermore, when an advert, while not suggesting an economic link, is so vague as to the origin of the goods or services at issue that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advert, whether the advertiser is a third party or is economically linked to the proprietor of the trade mark, the conclusion must also be that there is an adverse effect on the origin function of the trade mark.
Based on this case law, the Rotterdam District Court ruled that the advert is too vague as to the origin of goods. It does not mention that River Cruise Rotterdam is an alternative to, or a competitor of, Spido. This makes it impossible (or at least very difficult) for the average internet user to assess whether the services originate from River Cruise Rotterdam or Spido. This is particularly so as the name “River Cruise Rotterdam” is very descriptive. When the internet user searches for “spido”, it is looking for companies offering river cruises, which are exactly the services that River Cruise Rotterdam offers.
The preliminary injunction decision follows the trend that was set in a similar decision of the Noord-Holland District Court (2020) in a case between two thrift shops in Alkmaar, the Netherlands. In that case, the use of the trade mark “Rataplan” (a Benelux trade mark) as a Google Adword by Thrift Shop Alkmaar (also a descriptive trade name) constituted trade mark infringement because of the vagueness of the resulting advert. The average internet user might believe that Thrift Shop Alkmaar sold products under the “Rataplan” brand or was somehow otherwise associated or connected with Rataplan.
The absence of a trade mark in a Google advert therefore does not automatically mean that no action under Benelux trade mark laws is possible. The use of a descriptive (trade) name by the alleged infringer could very well lead to a successful trade mark claim in the courts of the Netherlands - a useful tool for brand owners.