Four Recent Judgments of the Spanish Supreme Court relating to Trademarks (IV): “Masaltos II”
The last of this series of posts about the recent Spanish Supreme Court’s case law on intellectual property is Judgment 105/2016 of February 26, “Masaltos II“. This decision puts an end to the dispute held between MAHERLO IBERICA, S.L. and CHARLET S.A.M. regarding the alleged infringement by the later of the former´s European Union Trademarks “MASALTOS”. Please note that a week before this decision, the Supreme Court adopted another judgement about the infringement of the same trademark in Internet: “Masaltos I“.
The conflict was originated by the use made by CHARLET of several terms similar to the MASALTOS trademarks owned by MAHERLO which were registered as keywords in an adwords system in order to promote identical products to those protected by the said trademarks.
In substantive terms, the Judgment does not provide any significant contribution to the doctrine developed by the Court of Justice of the European Union (mainly in CJUE Judgements of 23 March 2010, c-236-238/08, “Google France”, and of 22 September 2011, C-323/09, “Interflora”). Nevertheless, we point out below some brief notes regarding the most interesting conclusions drawn by the Court:
1.-The use of as a keyword of a trademark owned by a third party in a referencing system such as Google Adwords is not illicit per se.
Said use shall only be unlawful if it affects any of the trademark functions (indication of origin or the investment function) or in the case of renowned trademarks, if it entails an advantage of its renowned or distinctive character or if any of these characteristics is lessened.
The above may seem kind of obvious. However, we have sometimes found comments and opinions to the contrary coming from both case law and colleagues.
In this contest see for instance Judgment number 165/2012 of 3 July issued by the Commercial Court No.2 of Alicante (AC 2013\2176) in which it was stated that the sign “BORNAY” was infringed due to its mere use as a keyword, without assessing if the trademark functions were affected in view of the content of the sponsored advertising (see infra).
2.-In order to determine if the function of indication of origin is affected we must turn to the wording of the sponsored advertisement since the existence of infringement depends ultimately on it.
The function of indication of origin is affected when the advertisement that pops up following the use of a third party´s trademark as a keyword does not allow or barely allows the internet user, usually well informed and reasonably attentive, to determine if the products or services referred to in such advertisement come from the trademark holder or from an undertaking economically connected to it, or if on the contrary they come from a third party.
It is also considered that the said function is jeopardized when the text even if not suggesting the existence of any economic link is so imprecise that the user cannot determine if the advertiser is a third party towards the holder or, on the contrary, if it is economically linked to the holder.
In the present case the wording of the sponsored advertisement was the following:
“Increase its 7 cm height | bertulli-zapatos.es
Footwear with insoles to increase the height.
In accordance with the above, and after having analyzed the wording at hand it was concluded that there was no infringement. The text is clear enough, does not suggest any sort of link with third parties and enables end users to conclude that the goods at stake come from a given operator.
The Spanish Courts have come to the same conclusion in some other occasions. See for instance:
a. The Judgment no. 279/2013 of June 27 issued by the Appeal Court of Alicante (8th Section) (ECLI:ES:APA:2013:2757) that decides on appeal the case already mentioned above regarding the alleged infringement of the trademark “BORNAY”. In this case, the text of the sponsored ad was the following:
“Windspot 1.5 to 15 kw, the revolution of the small, reliable, afordable, silent eolian. www.windspot.es”
The Court revoked the first instance decision (which, as pointed out, omitted the wording of the ad) and ruled that taking into consideration the text of the advertisement, the indication of origin was not hindered.
b. The Judgment no. 169/2013 of October 31 of the Mercantile Court No. 1 of Alicante (ECLI:ES:JMA:2013:446) on the alleged infringement of the trademark “ORONA” (this judgment was appealed and overturned but not in connection with the decision on trademarks). In this case the text was:
“Save up to 70% Lift maintenance.
www.mantenimientoascensores.net/ http://www.mantenimientoascensores.net/>
All brands and moders. Get in!”
The Court also considered that the wording of the advertisement did not hinder the function of indication of origin.
3.- Relevance that text of the sponsored ad mentions the trademark used as a keyword.
When determining if the function of indicating of origin is jeopardized, it is important to take into account whether the trademark at hand is mentioned in the text of the sponsored ad or not.
In first instance the text did not include the claimant´s right, fact that helped the Court in concluding that there was no infringement at all.
In this context, the Judgment also refers to the absence of any mention of the plaintiff´s trademarks in the defendant´s domain name and web site. However, we deem that these two circumstances are not relevant here because as stated by the CJEU, the risk of confusion must be determined by analyzing the text of the sponsored ad (and not whether the mark at hand is used anywhere else).
4.-When assessing the holder´s ius prohibendi, the visual configuration of the prior trademarks has to be considered.
The European Union Trademarks MASALTOS with numbers 8729881 and 8729907 used as basis of the infringement actions lodged by MAHERLO are mixed ones (meaning that they include text and a graphical component). This is an important fact because their ability to block uses by third parties actually comes from the combination of both the word and the graphic elements.
Thus, in cases of purely denominative uses (such as those made in an adword system) the distinctiveness derived from the visual aspect would have to be discarded.
To conclude
The Judgment applies without further consequences the doctrine developed by the CJEU as already made by some Appeal Courts (Alicante mainly).
In view of the said doctrine, in order to avoid trademark infringement (in an adwords system) it would be enough with drafting the text of the advertisement in such a way that any doubt about the indication of origin is avoided. This, as seen in the examples provided above, seems to be quite an easy task.
All in all, trademark actions may not, in the end, be very effective in the fight against this kind uses of third parties´ signs on the Internet. Being aware of that, both holders and legal advisors should think if it is worthy to bring trademark infringement actions or rather opt for unfair competition actions.
In this sense, we consider of special interest the strategy followed by the plaintiff in the proceeding which ended with the Judgment of the Appeal Court of Alicante no. 67/2014 of 3 April (JUR 2014\155861).
In trademark terms the arguments of the claimant were limited to prove the existence of a risk of confusion without using the reputation of the prior marks, being the action dismissed since the text of the advertisement was clear enough and avoided any sort of risk of confusion (see supra). However, the notoriety of the prior marks was actually used in the context of article 12 of the Spanish Unfair Competition Act (in Spanish) (unfair advantage from a third party´s efforts), being in this case upheld by the Court.
Related Posts:
- Four Recent Judgments of the Spanish Supreme Court in the Field of Trademarks (II): “Masaltos I”
- Four Recent Judgments of the Spanish Supreme Court relating to Trademarks (III): “Champín”
- The use of trademarks as adwords cannot be considered as taking unfair advantage from a third party´s reputation
- US Case Law: “Rosetta Stone vs. Google”