Court of Appeal of Aix en Provence (2nd Chamber), 6 December 2007, TWD Industries v. Google France, Google Inc
Google Inc is incorporated in the US and exploits a programme called Adwords, which displays banner advertisements (‘commercial links’) when a particular search item is entered in the Google search engine. This activity generates a major part of a search engine’s income. Google France was incorporated in France in 2002.
TWD commercialises a software product under the name Remote-Anything, a name that it registered as a trademark in 2005. TWD Industries sued Google Inc and Google France, claiming that when a research is carried out with the keywords ‘Remote-Anything’, commercial links are displayed which send the users to websites of companies that commercialise identical and competing products. The High Court of First Instance of Nice dismissed TWD Industries’ action. They then lodged an appeal.
The Court of Appeal of Aix en Provence first states that Articles L.713-2 and L.713-3 of the Intellectual Property Code prohibit 1- the reproduction, use or affixing of a mark or the use of a reproduced mark for goods or services that are identical to those designated in the registration, and 2- if there is a likelihood of confusion in the mind of the public, a) The reproduction, use or affixing of a mark or use of a reproduced mark for goods or services that are similar to those designated in the registration, and b) The imitation of a mark and the use of an imitated mark for goods or services that are identical or similar to those designated in the registration. The Court ruled that the use of the keyword ‘Remote-Anything’ in connection with the same types of products as those protected by the trademark, without the authorisation of the owner of the trademark, is an act of infringement of the said trademark.
In the present case, the Court of Appeal underlined that Google Inc and Google France played an active role, and may not be considered as mere ‘technical providers’. As they displayed advertisement messages in the form of commercial links for advertisers who pay them for these services, they may be held liable under trademark law. In particular, they may be held liable, as they approved the chosen keywords (a choice which is made by the advertisers with Google’s assistance). They are supposed to verify that the commercial links do not infringe any rights of third parties. Moreover, they may not allege that prior verification is impossible for supposedly material, legal and economic reasons. The Court adds that even if it were established that it is impossible to verify, Google Inc and Google France would have to either simply abandon this activity or bear the consequences.
In fact the Court of Appeal reversed the High Court’s decision, ruling that Google Inc and Google France had committed acts of infringement of the trademark in question. The Google companies were condemned to pay 15.000 euros in damages to TWD Industries.