Combatting Online Trademark Abuse: The Court of Justice Strenghtens Trademark Holders' Arsenal

While offering trademark holders unparalleled marketing opportunities, the Internet also allows competitors to ride on their coattails. Such freeriding is often unfair or even illegal.

Achieving high search rankings is the Holy Grail of e-marketeers, who have various tools at their disposal to achieve this goal, including the use of third parties’ registered trademarks in order to attract attention to their products or business.

In general, the use of third-party trademarks in keyword advertising (such as Google AdWords) is allowed under trademark law, with a few notable exceptions:

  • where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant Internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trademark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party; and
  • where it substantially interferes with the proprietor’s use of its trademark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.

Trademark holders that wish to act against the use of their trademarks in domain names (i.e. a website address) can opt for inexpensive CEPANI arbitration proceedings (for “.be” domain names) or swift summary proceedings (comme en référé/zoals in kort geding) for the unlawful registration of a domain name (“.be” domain names and any domain name registered by a person established in Belgium).

The proprietors of Benelux trademarks can also rely on a specific provision of the Benelux Convention on Intellectual Property, allowing them to act against the use of their trademarks “for purposes other than distinguishing goods and services”. This provision is of particular interest when a registered trademark is used in metatags, i.e. invisible keywords in the underlying code of a webpage which influence the search results.

In a recent judgment rendered on a request for a preliminary ruling from the Belgian Supreme

Court (Cour de cassation/Hof van cassatie), the Court of justice of the European Union ruled that the use of a registered trademark in a domain name and metatags constitutes advertising within the meaning of the rules on misleading and comparative advertising. According to the Court, the term "advertising" must be interpreted broadly to cover all steps taken by a trader to promote the sale of its goods or services which are capable of influencing the economic behaviour of consumers and, therefore, of affecting the trader's competitors. Any such step should thus be subject to the rules on fair competition in advertising.

The potential application of the rules on misleading and comparative advertising to domain names and metatags is yet another arrow in the right holder’s quiver, in addition to the remedies provided for by trademark law.