In everyday life, communication is a sign of expansion and openness to others. In business life, however, the aim is much more strategic. For an advertiser, the object of communication with the consumer is interrupting his routine, distract him from his usual habits, and divert him into his universe, away from the competition.


If the very idea of progress implies increase of communication means, the emergence of the Internet has multiplied these means exponentially. As a consequence, digital communication has increased competitive strategies ... and unfair trade practices.


Digital communication has become pervasive in every meeting, in every decision, and indeed, in every communication. Companies trumpet themselves on the web, which makes it easier for the competition to follow in their footsteps and profit from their reputation.


Despite this risk, no company can afford to go without an Internet presence. Therefore, more and more companies implement a digital strategy that will encourage the largest number of people to purchase their products or services. In addition, knowing that a positive profile is essential to maintaining, in the eyes of others, a good corporate identity, companies strive increasingly to enhance their digital reputation, now known as e-reputation.


In order to capture web surfers, all companies want search engines to place their website at the top of the list of results. To achieve this aim, some cleverly insert into their web pages meta tags with keywords and hyperlinks. Interestingly, this procedure is known as "natural" referencing.


How natural is it? Let us consider a small example, the keyword "j‘adore". If we type it in various search engines, only Lycos places the site of the famous eponymous perfume creator at the top. Yahoo and Bing place first; the site of the creator, arrives only second. On the Google and AOL search results, also comes first, but www. comes only third [1]. And if we do the same test on the exact search engines from another country, the results will not be identical.


In these circumstances, how can one improve his visibility?


The Ins & Outs of online communication


Knowing that 60% of users do not go beyond the first page and 90% do not go beyond the second [2], visionary online retailers have begun to use a paid referencing system to ensure that their site will be well positioned by the search engines. Over the years, the number of companies using this new technology has increased and fierce competition has developed on the web with the "Adwords" business [3] .


The practice of purchasing specific keywords, in order to enjoy a privileged position in searches, is now identified in case law by an evocative term: the "squatting position” [4]. It should be borne in mind, however, that advertisers enjoyed a few good years of freedom before legislation required that these paid advertisements should be declared as such so that web surfers are not being deceived by search results.


In the aftermath of several legal cases, skilful surfers now have the opportunity of ignoring the sites of these advertisers. Search engines must identify them with headings such as: "Sponsored Links" or "Advertisements". It should be noted, however, that the judges, in the interest of free trade, allowed online retailers to continue to communicate in this way, and many users still click on these links.

Therefore, the risk of unfair competition or forgery has not been eliminated. Far from it!


Efforts to strengthen corporate strategy by means of registered trade marks are no longer sufficient to maximize the value of a company’s assets. Compliance with the exclusive right to a trade mark is limited by the right to quote and some competitors will happily exploit this. It is therefore clear that, in the digital age, it becomes vital for holders of intellectual property rights, to make every effort to prevent the misappropriation of their intangible assets.


How to protect intellectual property rights


The owner of the trade mark cited by a third party can take action!


But against exactly whom? And when?


In the example above, if the top reference were to the benefit the trade mark owner’s distributor, the insertion in the right spot of an appropriate keyword, such as "vuitton", may be of even greater benefit to a competitor.


Indeed, the eponymous luggage manufacturer considered that exclusive use of his trade mark could no longer be enjoyed. The outcome of the lawsuit that he initiated is at the heart of a case law that has established the responsibilities of Internet service providers. Indeed, on March 23rd 2010, the Court of Justice of the European Union (CJEU) issued what lawyers call "the Google ruling“. Since then, the service provider is relieved from responsibility for the illegal use of a trade mark by a third party when a keyword, identical to the trade mark itself is logged on behalf of an advertiser, "unless having acknowledged the illegitimate nature of the data or of the advertiser's activities, it failed to act expeditiously to remove or disable access to the data.".


The Google ruling gives us a way forward.


First, the unlawful act must be discovered. Therefore, the web needs to be monitored.

The discovery of any unauthorized use should be carefully analyzed. If there are real legal risks involved, the owner must take measures in order to undo the damage and prevent such risks in the short, medium and long run.


Finally, if the trade mark owner wishes to take legal action to defend his rights, he must prove not only the infringement of his exclusive rights to the relevant trade mark, but also its use by an unauthorized third party, for identical or similar products. This requires meticulous preparation of the defense of his rights.


By so doing, the owner of exclusive rights to the trade mark will enhance the value of his assets and at the same time, his e-reputation.


Writer : Catherine Levalet


[1] 26/11/12 Result of the word "I love" on the sites listed, excluding advertising sites.


[3] Adwords, the name of the advertising system of Google search engine is a contraction of English advertising (advertising) and word (word).

[4] "squatting" would be translated as "se tapir”. There is no term used to describe this position in the tracks of a competitor. See Cass.Com. September 25, 2012, No. 11-18110, D

  • Publication date: December 2012
  • IP ALERT : IP ALERT Trademarks, Designs and Models
  • Subject(s) : Trademarks
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