The Google AdWords scheme allows advertisers to sponsor popular search terms which, if entered by a user, will include the sponsor's links beside the normal search results.
In Google France, located at Google.fr, the terms "bourse des vols" (flight market) and "bourse des voyages" (travel market) were available for sponsorship. However, travel agencies Luteciel and Viaticum objected because they own the terms as registered trade marks in France.
The companies sued in December 2002 when Google France refused to drop the terms from its AdWords scheme. The travel companies complained that rivals could use AdWords to exploit their marks. The court was shown that the term "bourse des vols," for instance, produced a number sponsored links, the top one being for Swiss International Air Lines at swiss.com.
Google France argued that the terms were generic, that they were not protected by valid trade marks, and that the issue was a technological one that could not be resolve.
But the court disagreed with Google on all grounds. In an opinion issued last Monday it ordered Google France to remove the disputed terms from AdWords within 30 days. It ordered the company to pay €70,000 in damages and €5,000 in court expenses, and to post extracts of the judgment on its site for one month. It also prohibited the company from profiting in future from such use of the two marks on pain of a €1,500 fine per infringement.
According to Reuters, the ruling is the first in which a trade mark owner has successfully sued a search engine over the practice of allowing advertisers to use protected terms in text ads.
It may be the first case of its kind in France; but the English High Court has already ruled on the practice in similar circumstances.
The case concerned the recruitment site totaljobs.com which had used another company's trade mark, "Reed," as a reserved term with at least one search. The court ruled against the use of the mark in this way and in its use as a web site meta tag.
Arguably the most controversial aspect of the Google case is that registered trade marks are held in France for what many would consider to be generic terms. If a search engine offered the word "Nike" as a key word for sponsorship, and it was sponsored by Reebok, for instance, few would be surprised if Nike successfully took action.
The Google France decision is available in French only.