France: Keyword use may lead to trade mark infringement

April 25, 2016

Sixième Son Communication is a French communication agency specialising in audio branding and sound design. Sixième Son owns the trade mark Sixième Son, registered inter alia for advertising and sound production services. The French company Dissonances also operates as a communication agency focusing on sound creation. Dissonances registered the keywords "sixième son" and "sixiemeson" via Google's paid referencing service AdWords. Following a Google search, these keywords generated sponsored links titled "Sixième son – dissonances.fr" with the commercial tagline "Des musiques originales pour enrichir votre communication" ("original music to boost your communication") and redirected to Dissonances' website www.dissonances.fr. These findings led Sixième Son to sue Dissonances on the basis of trade mark infringement and unfair competition.

Applying the recent case law of the Court of Justice of the European Union, in particular the 2010 Google and 2011 Interflora decisions, the Paris Court of First Instance noted in its decision dated December 17 2015 that the mere use of a competitor's trade mark as a keyword in an internet referencing system does not amount in itself to trade mark infringement. On the other hand, the owner of a trade mark is entitled to prevent a competitor from advertising on this basis where the use of the trade mark as a keyword has an adverse effect on one of the functions of the trade mark, in particular the trade mark's function of indicating origin. This will be the case where the advertising generated on the basis of that keyword does not enable reasonably well-informed and observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the owner of the trade mark or an economically related entity, or originate from a third party.

In other words, use of the trade mark as a keyword will only be considered reprehensible if the content of the corresponding ad is likely to cause confusion among consumers as to the origin of the goods or services.

In the present case, a search on the keyword "sixième son" was generating a top result sponsored link marked as "advertising", highlighted in yellow and titled "Sixième son – dissonances.fr". In other words this title was identically reproducing the registered trade mark Sixième Son.

Although the sponsored link was clearly identified as advertising, thus informing the public (which, according to the Court, is used to distinguish paid results from organic results) of its commercial nature, the judges noted that the combination of the trade mark Sixième Son with Dissonance's name to promote the website and activities of the latter is likely to cause confusion or mislead consumers into believing that the two companies are somehow related. In this regard, the judges stressed that Dissonances provides communication and sound creation services, which are identical with the services covered in Sixième Son's trade mark registrations. Moreover, they found that the commercial tagline used – "Des musiques originales pour enrichir votre communication" ("original music to boost your communication") – clearly promotes identical and directly competing activities.

Accordingly, the Court found that Dissonnance engaged in trade mark infringement and unfair competition due to the confusion caused with Sixième Son's trade mark, company name and trade name and ruled in favour of the latter.

Interestingly, Dissonances had filed a counterclaim on the basis that Sixième Son also registered its company name "dissonances" as a keyword to promote its own activities. This keyword was generating a sponsored link marked as "advertising", highlighted in yellow, mentioning Sixième Sens' website and titled "Sixième Son – sixiemeson.fr". The Court considered that the consumers were perfectly able to identify this sponsored link as an advertising and that Dissonances did not produce any evidence of unfair competition, especially since no reference to Dissonances was made in the title of the ad or in the ad itself. The counterclaim was therefore denied.

In conclusion, based on the French and EU courts' current practice, the mere registration of competitors' trade marks as keywords on internet search engines is not in itself reprehensible. However, traders are advised to be very careful in the way they use such keywords to advertise their own goods or services online.