Counterfeiting and AdWords: it’s the result that matters!

In a decision issued on October 18, 2023, the French Supreme Court (Cour de cassation) reiterates that the use of a competitor’s trademark for referencing purposes is acceptable, provided that it does not give rise to a risk of confusion for the consumer as to the results obtained.

In this case, the company Aquarelle, owner of the eponymous trademark and specialized in the sale of flowers, noticed that a competitor was using the term “Aquarelle” via the AdWords referencing system.

It should also be remembered that in the field of search engine optimization, case law has established that search engine optimization terms present in the source code can only be prohibited by trademark owners if the resulting advertisement does not create confusion as to the origin of the goods or services (CJEU March 23, 2010, GOOGLE v/ LOUIS VUITTON MALLETIER SA No. C-236/08 to C-238/08).

In this case, although the source code was not visible to the Internet user, the referencing referred to goods and services similar or even identical to those designated by the trademark held by Aquarelle, and could therefore be analyzed as a form of trademark infringement. However, the result of using the Aquarelle trademark as an AdWords ad, i.e. highlighting the competitor’s website, did not mention the company owning the trademark. Thus, no occurrence of the term “aquarelle” was present in the ad, link or URL, and the competitor’s website name was clearly displayed in the ad.

Consequently, the prevention of the use of the trademark by a third party for referencing purposes is only justified if the competing website, the result of the search, creates a real risk of confusion by not enabling the consumer to distinguish the two companies.

Thus, referencing aimed solely at optimizing the visibility of sites without creating confusion among consumers would prove to be an effective advertising strategy.

– Cloé DESSEMON, legal intern at Mark & Law