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The use of third-party trade marks as keywords in Internet search engines

March 2012 saw the first final Sentence passed by a Spanish court following recent case law at the Court of Justice of the European Union regarding the use of third-party trade marks as keywords in Internet search engines, which commenced two years ago with the Louis Vuitton – Google France case.
In December 2011, the Commercial Court no. 9 of Madrid passed a Sentence on the claim brought by the company Maherlo Ibérica, S.L. against Calzados García, S.L. to the fact that Calzados García, S.L. entered identical names to the trade marks registered by Maherlo Ibérica, S.L., “masaltos” and “masaltos.com”, as metatags in the source code or keywords in Internet sponsored links.

By way of context, the claimant is a company specialising in the commercialisation of a special type of male footwear that allows the wearer to gain height by including a raised insole inside the shoe, which is not noticeable from the outside.

The defendant is a competitor, and had entered the trade mark “masaltos” and “masaltos.com” in its source code, as well as as a keyword, which means that it was using the claimants trade marks to distinguish between identical products and consequently mislead the public as regards to from which company they originated.

As you know, Internet search engines, such as Google, give two types of result: natural, which are related to the source code (metatags) and sponsored, which highlight the advertisers pages by using keywords.

By entering the competitors keyword in the source code, Calzados García, S.L. was able to include its company in the natural results, at no cost, when an internet surfer was looking for the claimants “masaltos” product.

The Sentence says that “we can see how when a customer enters the trade mark “masaltos” in the Google search engine, next to the link to the Maherlo Ibérica website he sees a sponsored link to the defendants website, a direct competitor that commercialises the same type of product, and in which the same sign is used again, i.e. the expression “masaltos”, which in this case has no justification other than causing confusion for the defendant”.

The Sentence considers that “the use of the expression “masalto”, which matches the name of the claimants registered trade mark, together with the description “MAS ALTO” (TALLER) or without this description, represents a breach of the claimants exclusive rights.

This Sentence finally prevents the competitor from using the claimants trade marks as a metatag in the source code or as a keyword in search engines.

In view of this important precedent, any companies and/or individuals that notice how competitors use their own trade marks to position their own product and/or service in the market at the expense of the efforts made by another company can refer to this Sentence to fight against anyone who has used third party trade marks to redirect potential clients to their own company.

Carmen Sánchez-Puelles