Editor's note: Maherlo Ibérica S. L. The company is a registered trademark of the European Union "MASALTOS. COM" and "MASALTOS" The trademark owner of. Charlet S. A. M. In use by the company Google AdWords Paid link service, Set the above trademark as the search keyword, To get more hits on their website. Maherlo The company sued Charlet The company infringes its above - mentioned EU registered trademark rights.

[background] Maherlo Ibérica S. L. The company is a registered trademark of the European Union "MASALTOS. COM" (Registration number: 008729881) and "MASALTOS" (Registration number: 008729907) The trademark owner of. Charlet S. A. M. In use by the company Google AdWords (Google keyword advertising) Paid link service, Set the above trademark as the search keyword, To improve their website (bertulli-zapatos. es) Click through rate of. Maherlo The company sued Charlet The company infringes its above - mentioned EU registered trademark rights. The court of first instance dismissed the suit, The reason is based on previous cases in the European Court of Justice, Defendant uses Plaintiff's registered trademark as Google AdWords The act of retrieving keywords, Without prejudice to the plaintiff's trademark function, That is, to indicate the origin of goods, Advertising and economic functions, Therefore, the defendant's use of the trademark does not belong to the use of trademark. The court of second instance affirmed the decision of the first instance, So the plaintiffs appealed to Spain's Supreme Court. The dispute point of appeal is whether the use of another person's registered trademark as a search engine keyword is legitimate use behavior.

[conclusion] The issue has been discussed in several European Court decisions. With the help of this case, The Spanish Supreme Court summarized the principles established by the European Court of Justice to resolve such disputes, And the criteria by which the legality of such use has hitherto been judged. First of all, The Spanish Supreme Court emphasized, The exception standard for exclusive use granted as a trademark is not absolute. Only when the use of trademarks as keywords is recognized as trademark use, To constitute an act of trademark infringement. Therefore, Use a registered trademark as a search engine keyword when the following requirements are met, It's a legitimate use: (1) The use of a trademark does not impair its function of identifying the origin of goods; (2) The act of using a trademark does not damage the economic function of the trademark; and, (3) The average Internet user understands that the advertised goods and services are not provided by the trademark owner or the business concerned. The ultimate purpose of the above three requirements is to avoid the use of the above behavior may cause confusion and misidentification. For well-known and famous trademarks, If the use of the trademark does not impair or unduly exploit the distinctiveness or fame of the trademark, Then it's a legal use. Therefore, Based on European Court of Justice jurisprudence, The Spanish Supreme Court ruled, Although the defendant in this case used "MASALTOS" and "MASALTOS. COM" Two trademarks as Google AdWords Search keyword, However, the advertisement displayed in the search results returned by the search engine does not cause the user to misidentify the relationship between the advertisement content and the plaintiff's trademark or may cause confusion with the plaintiff's trademark, Therefore, the defendant's act does not constitute a tort.

[comment] Courts in Spain and the European Union have dealt with a number of contentious cases over the legality of using someone else's trademark as a keyword in a search engine. The Spanish Supreme Court's decision in this case also states, There are still unresolved parts of such disputes, though, But through a series of decisions the courts are gradually refining their criteria, And gradually resolve the remaining doubts in the dispute. 2016 years 2 month 19 In a ruling in Japan (Case number: ECLI: ES: TS: 2016: 516) , The Spanish Supreme Court held that, Because the trademark in question appears directly in the ads returned by the search, Therefore, the behavior of using others' trademarks as keywords infringes others' trademark rights. while 2016 years 2 month 26 In a separate ruling in Japan, The Spanish Supreme Court held that, The search did not return ads with the trademark in question, Therefore, the behavior of using others' trademarks as keywords belongs to the legal use behavior. Thus, We can infer that, In the opinion of the Spanish Supreme Court, The mere use of another's trademark as a search keyword does not in itself impair the function of the trademark, Only at least if the registered trademark appears explicitly in the ads returned by the search, It is possible to find that such use impairs the function of the trademark.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights