London24feb10(Ucl)

Trademarks & the Internet - The French perspective Cédric Manara EDHEC Business School (France) LegalEDHEC Research Center <www.cedricmanara.com>

Uderzo & Goscinny, Fish fight

Trademarks & the Internet The A French perspective

0. Landscape
1. eBay -related cases
2. Google -related cases
… Sedo , etc.

0. French landscape
An IP-friendly country
Many luxury brands & publishers
6 recent laws to make repression more severe (2004, 2006, 2007, 2008, 2009 x 2)
The third State in the world for the number of trademark registrations

Who said " chauvinists "?
We, French, do not know much when it comes to EU trademark law
We, French, invented the Minitel
We, French, pretend to know what is the internet, and even to rule it:
see "3 strikes" law [2009]
see "Google tax" [2010]
remember the Yahoo case? [2000]

Yes, we rule the internet!
Application of French law in international conflicts: from excessive…
Payline [1997] : Infringement of a French trademark when a German company uses on its German pages a similar sign
… to more reasonable
Hugo Boss [2005] : No infringement of a French trademark if the foreign website does not target the French public

Other examples of erring cases
300 + cases in which domain names were deemed infringing to trademarks
… though there was no use, only mere reproduction
Dec. 2005: Court of cassation said stop
 Epistemology

UDRP complainants’ country of origin [between 1999 & 2007] [before WIPO] Source: AFNIC report, 2007

Litigation level in France: high
Legislative efforts towards courts specialization
Specific fields of regulations
Decree on .fr names [Feb. 2007]
+ several ADR mechanisms for trademark owners
including dispute resolution administered by the .fr registry itself

1. eBay -related cases
Cases against eBay users for trademark infringement on eBay pages: ~ 30
Cases against eBay for trademark infringement on eBay pages: 0

eBay -related cases
June 2008: 4 cases in which were rejected the ‘hosting provisions’ of the eCommerce Directive
Troyes court of first instance, Hermès
 Civil liability
Paris commercial court [3 rulings the same day: Dior & Guerlain , Dior Couture , LVMH ]
 Legally, this court did not have jurisdiction…
L’Oréal case  you must talk to each other! [Paris civil court, May 2009]
[several other decisions granted eBay the benefit of the ‘hosting provisions’ shield, but not in trademark cases]

eBay -related cases [2]
eBay sued by Dior , Kenzo , Givenchy & Guerlain for the use of trademarks in ~40 sponsored links displayed on Google, MSN, Yahoo & AOLSearch, which directed to its pages
37 keywords purchased by eBay affiliates
5 by eBay itself
The trademarks were used for promotional purposes
The use of these signs as keywords is likely to create confusion [Paris Court, 18 Sept. 09]
 though the court further notes that there is no ambiguity on the identity of the advertiser!
 ‘ advertisers’ selection in AdWords of keywords which correspond to trade marks can take place for many legitimate purposes ’
‘ trade mark proprietors can prevent [the use of trade marks in the ads] if it involves a risk of confusion’
[CJEU Advocate General, 22 Sept. 09 – C-236/08, No 152-153]

eBay -related cases [3]
Louis Vuitton sued eBay for
the use of typos of its name in ~25 sponsored links displayed on Google, Yahoo, Yahoo Shopping, Altavista & MSN
which directed to default pages
Paris Court [11 Feb. 2010]
no confusion on the origin of goods ( ! )
but unjustified use of well-known trademarks in ads
+ parasitism of LV commercial name & domain name

2. Google-related cases
About 50 cases in 6 years

Who was the target ?

47 rulings [first instance]
5 claims rejected
evidence issues, use of a generic expression, trademark deemed void, no harm
4 cases withdrawn
Sanction in 38 cases

Extreme diversity of legal grounds

What explains this diversity ? [1]

What explains this diversity ? [2]
Courts
Understanding of the functioning of AdWords
Sometimes take into account the keyword generator, sometimes not
Misapplication of EU trademark law
Google
Evolution of the AdWords program
Education of the courts

Other Google -related cases [1]
Search tools not liable for the way they display trademarks in natural results
Yahoo + Google 2009 case [cited in England and Wales High Court (Queen’s Bench Division) Decision of July 16, 2009, [2009] EWHC 1765 (QB)]
Google Books contrary to French copyright law, but use of publishers’ trademarks found lawful [Dec. 2009]

Google Suggest

2 companies sued after their name had been combined with the word ‘ arnaque ’
CNFDI : An insult that must be removed
Direct Energie : Court ordered to explain clearly how the suggestions are generated

 What to make of all this ?
New tools  renewed view of protection?
French courts tend to find that the internet users can easily be confused
CJEU Advocate General is skeptical there can be a risk of confusion [No 82 to 92]
New forms of uses of trademark
Mirror what internet users are doing, expecting, or looking for
Do they qualify as ‘use’ under trademark law?

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London24feb10(Ucl)

by Cedric Manara on Feb 25, 2010

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