Adwords trademark claim

Lawyou — viernes, 26 de febrero de 2021

Trademark claim in Google ADS (formerly Google Adwords) Legal aspects in Adword or ADS of a Keywords

In a previous publication we have already explained the management of the Keywords campaign, in which we explained the differences between SEO and SEM and the importance that these two important terms have in the legal world.

We are going to analyze the two most relevant cases that have occurred in relation to Google ADS the use of this advertising platform with words of the competition used to promote products, the ORONA case and the MASALTOS case.

The ORONA case is a case of unfair competition. The Judgment of the case is STS 94/2017, of February 15, which deals with the use of third party trademarks as happened in the digital advertising platform of Google Adwords (google ads). In this decision, the Supreme Court judges a case of unfair competition, trademark infringement and taking advantage of the reputation of others.

The case involves two companies, ORONA as plaintiff and CITYLIFT as defendant, in which the plaintiff alleges the use of its own trademarks by CITYLIFT. The claim was dismissed at first instance, but the infringement of article 12 of the Unfair Competition Law was nevertheless upheld at second instance.

In cassation, the Supreme Court did not consider that there had been unfair competition, alleging in Legal Ground 2, paragraph 6 that «when the advertising appearing on the Internet on the basis of a keyword corresponding to a well-known trademark proposes an alternative to the goods or services of the owner of the well-known trademark without offering a simple imitation of the goods or services of the owner of said trademark, without causing dilution or blurring and without otherwise impairing the functions of the said mark, it must be concluded that such use constitutes, in principle, sound and fair competition in the sector of the goods or services concerned and, therefore, is made with ‘due cause’ within the meaning of Articles 5(2) of Directive 89/104 and 9(1)(c) of Regulation No. 40/94.»

Another case in which the Supreme Court ruled on whether the use as Google ADS of another’s trademark constitutes an act of infringement of said trademark is the MASALTOS case. We are before the STS 620/2016, of February 26, in which the Supreme Court states that despite the existence of a trademark, it is not a key element for there to be infringement of the acquired trademark, but for there to be infringement in the creation of a trademark such as Adword (Google ADS) it is necessary that the trademark is reproduced in the legal text, something that in this case does not occur.

These two cases are a clear example of the complexity of the Competition Law and Intellectual Property Law.From our entity, we ensure that, with an appropriate digital strategy, the independent lawyers that make up LAWYOU see their rights protected in the digital field.

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