Trademark infringement beyond the territory through the use of Adwords
In the recent case “GENIVER SAS C/ PODIOS SRL S/ PRECAUTIONARY MEASURES (Cause No. 10768/2021/CA1), CCCF, Chamber I”, the Court of Appeals decided to extend the scope of the precautionary measure that ordered the cease of use of the plaintiff´s trademark in the sponsored links through Adwords or keywords in the most popular web search engine: Google, regardless of the country from which the links of the promoted website are accessed.
The owner of a trademark can prohibit its use on the Internet through Adwords to promote certain products or services on other websites, since it constitutes an alleged infringement of the trademark law.
In this case, Geniver SAS (hereinafter “Geniver”) requested that Podios SRL (hereinafter “Podios”) -owner of www.argentinow.com- and Mr. Rodolfo J. Rossi – designated on the Google platform as the person responsible for the use of the designation – to cease all use of the trade name and trademark “PAMPA DIRECT”, alleging that they used it to promote Podios´ online portal and divert customers. To this end, he stated that when conducting a search on Google with the expression “PAMPA DIRECT”, the first result among the sponsored links was that of Podios.
Prior to resolving the precautionary measure, the judge pointed out to the plaintiff that the docket could not verify the trademark infringement when searching the expression “pampa direct” in Google. However, it granted the request for producing early evidence and ordered the ex officio release to Google in order for them to report on the use of the designation “PAMPA DIRECT” in Google´s AdWords advertising system by the defendants or third parties.
Geniver verified through notarial verification that the site www.argentinow.com continued to appear as the second result of the “Pampa Direct” search when accessed from both a foreign IP and an Argentine IP. In the latter case, there was an advertisement followed by the expression “pampa direct argentine products to the world” associated with the defendant’s site. Therefore, he requested that the precautionary measure be issued by the judge.
Faced with this request, the first instance judge ordered the cease of the use of the sign “PAMPA DIRECT” on the Internet as part of any link to enter Podios´ website, prior real security, referring exclusively to it´s use in Argentina.
The plaintiff appealed the decision, requesting that the precautionary prohibition be extended to the use of the PAMPA DIRECT sign in Podios´ advertisements regardless of the country in which the search that allows access to said link is carried out, and not only limited to Argentina.
It points out that the judge did not understand the activity carried out by both companies, which consists in online purchasing and selling for Argentine products from abroad, service that is offered, disclosed and supplied locally. Likewise, it maintains that it would be complex and expensive to also have to litigate in the rest of the countries in order to avoid the appropriation and unauthorized use of the sign through an Internet link, resulting in the defenselessness of the owner.
The Court decided to modify the scope of the precautionary measure based on arguments that I consider important to highlight.
It found that the credibility of the law as proved, since it is a case which involves electronic commerce, both are Argentine companies that offer similar services on their websites and that the effects of the use of the plaintiff’s sign in the defendant’s advertising also occur in our country. Therefore, it decided that “there are no reasons that justify the inclusion of the plaintiff’s trademark in the advertisement in question.”
Consequently, the Court ruled that the defendants must refrain from using the sign PAMPA DIRECT on the Internet as part of any link to access their website regardless of where the user can access it through Google.
On the other hand, the Court resolved that a statement on the eventual existence of unfair competition cannot be ruled -in this state- without the counterparty having been heard.
This is a provisional measure that must be confirmed in the cease of use trial that the plaintiff must initiate. So far there are no records of a substantive action on the public consultation page of the National Judiciary, so I could not obtain further information of the trial.
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