In a decision dated October 18, 2023, the Court of Cassation, in line with European case law, examined the conditions under which the use of a trademark by a competitor as a keyword to improve its referencing may – or may not – be deemed infringing (Cass. Com., Oct. 18, 2023, No. 20-20055 (Société Aquarelle.com c/Société commerciale et touristique (SCT))
The company Aquarelle.com is the owner of the French and European Union word trademarks Aquarelle which it uses for its flower sales activity.
As part of its activity on the www.lebouquetdefleurs.com site, the competing company SCT had reserved the keyword "Watercolor" with the Google AdWords referencing service (paid referencing) and had integrated it into the source code of its website (natural referencing). Thus, the link to his site appeared among the first results when a query for the term "Watercolor" was made on the Google search engine.
Considering that the reservation and use of this keyword created a risk of confusion with its trademarks, the Aquarelle.com company had sued its competitor for trademark infringement.
This case is an opportunity for the Court of Cassation to review the way to assess whether the use of the trademark in the context of both paid and natural referencing constitutes an infringement.
On the use of the trademark for paid referencing (Google AdWords), the Court cites the principles set out by the Court of Justice of the European Union in its decision of 23 March 2010, Google France and Google, C-236/08.
Thus, it is recalled that the proprietor of a trademark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical to the trademark that that advertiser has, without the consent of the proprietor, selected in the context of an internet referencing service, for goods or services identical to those for which the trademark is registered, where the advertisement does not enable the average internet user to know whether the goods or services referred to in the advertisement come from the proprietor of the trade mark or from an undertaking economically linked to that proprietor or, on the contrary, from a third party.
It is for the national courts to assess the existence of an infringement of the function of indicating the origin of the trademark by determining whether or not the advertisement allows the internet user to know whether or not the goods or services covered by the advertisement come from the proprietor of the trademark.
However, in the present case, the mere fact that the advertisement at issue was the first result displayed after a search using the keyword 'Watercolour' was not sufficient. Indeed, this was immediately followed by the announcement for the "Aquarelle.com" website.
Furthermore, no use was made of the 'Watercolour' sign, either in the advertisement itself, in the link or in the URL address. Finally, the advertisement in question used common terms to describe the activity of delivering flowers ordered online.
This set of clues therefore allowed the average Internet user to deduce that this ad corresponded to a different site from that of the company Aquarelle.com.
On the complaint relating to natural referencing, the Court underlines that the proprietor of a trademark may prohibit its use in the source code even if it is not visible to the public, as long as it offers as a result of an Internet user's search an alternative to the goods or services of the trademark owner and does not allow, or only difficult, to know whether the goods or services targeted by natural referencing come from the owner of the trademark.
In this case, it was nevertheless considered that the Internet user was informed about the origin of the site, and that there was therefore no risk of confusion about the origin of the products and services offered.
It follows that in the absence of confusion as to the origin of the goods and services offered, the infringement of the trademarks of the Aquarelle.com company is not serious and its appeals are consequently dismissed.
Regimbeau is at your side to support you and recommend the most relevant actions in the event that your brand is used as a keyword in a search engine referencing system.
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