20 Jun Using a competitor’s trademark as an Adword : a risky business

In a recent decision (16 November 2015), the Court of Appeal in Mons (Belgium) has issued a prohibitory injunction against a company using a competitor’s trademark as an AdWord on Google.

The parties were two companies specialized in the manufacture and sale of verandas. Since 2013, the company VERANDAS CONFORT had registered and used the AdWord “Verabel’ in order to have its advertisement displayed as first result in commercial links in Google’s search engine when searching for the word “Verabel”. The company VERABEL had registered the trademark VERABEL and used it as its commercial and company name. VERABEL brought an action before the Courts against VERANDAS CONFORT in order to put an end to this practice.

VERABEL relied on a provision from the Benelux Convention on Intellectual Property which enables the holder of a prior registered trademark to prohibit a third party to use  in  the  course  of  trade  a  sign  in  respect  of  which,  because  it  is  identical  or  similar  to  the  trademark  and  the  goods  or  services  covered  by  the  trademark  and  the  sign  are  identical  or  similar,  there exists on the part of the public a likelihood of confuse on that includes the likelihood of association  with the trademark.

The Court examined the facts in order to determine if there was a an adverse effect on the function of indicating origin of the trademark, which would lead to a likelihood of confusion on the part of the normally informed and reasonably attentive web user.

In this specific case, the Court concluded that the content of the advertisement of VERANDAS CONFORT could lead to a likelihood of confusion when it would seem possible, for a web user, that this advertisement comes from an economically-linked undertaking rather than from a competitor. Moreover, according to the Court, the fact that it contains the word “advertisement”  does not avoid the likelihood of confusion.

Therefore companies should be careful when registering a competitor’s trademark as an AdWord, paying attention to the sector and the intended audience in order to avoid likelihood of confusion.

If you wish to have more information on this subject, do not hesitate to contact M. Guillaume RUE (guillaume.rue@cairnlegal.be).

Best regards,

The Cairn Legal team.