Versailles court of appeal – chamber 12, section 1 – 10 march 2005

Google / Viaticum, Luteciel

Extracts. Link to the original court order in french.

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[Considering] that it is henceforth necessary to examine these after having confirmed the validity of the defendant companies’ marks.

Regarding the infringement:

Considering that the mark is reproduced in accordance with Article L. 713-2 of the French Intellectual Property Code, not only where the sign reproduces all aspects of the said mark, without any changes or additions, but once again considered as a whole, it conceals the differences which are so insignificant that they may go unnoticed by an average consumer;

Considering that, on the other hand, the mark is imitated where its reproduction is only partial and the penalty supposes that, in accordance with Article 713-3, a risk may arise in the minds of the general public;

Considering that, in this case, statements by APP certify that the key words « bourse de voyages », « bourse de vols » and « bdv » were used enabling sales links to be shown to competitors of the companies VIATICUM and LUTECIEL;

Considering that these key words reproduce the marks « BDV », « la bourse des vols », « La Bourse des Vols » et « la Bourse des Voyages », where and insofar as the omission of the article or the use of small letters are insignificant details in the eyes of the average consumer;

Considering that there is imitation of other marks where and insofar as the omission of the figures « 3615 » or the letters « com » that all consumers attach, firstly for a Minitel service, secondly for an Internet service, may not, above all where the infringed signs are used in one of these means of communication, lead the public by mistake to the links between these signs and marks;

Considering that infringement by imitation is similarly established, even if one of the marks (3615 Bourse des Vols) is a semi-figurative mark, as confusion in the public’s mind exists in the same way;

Regarding GOOGLE FRANCE’s liability:

Considering that the company GOOGLE FRANCE attempts to create confusion between its activity as a search engine and that as a service provider offering paid positioning, it is necessary to point out that its liability is only sought with regards to the second capacity and this capacity alone;

Considering that where and insofar as its attempts were in vain to seek to establish that it could benefit from the provisions of statute and case law applying to technical intermediaries;

Considering that the technical explanations, aimed at justifying its incapacity to prevent the objectionable conduct by its clients or put a stop to the injurious consequences thereof, are similarly ineffective;

Considering that no circumstances of force majeure existed that may exempt it from liability, where and insofar as it is proved that two other service providers in the field of paid positioning, the companies OVERTURE and ESPOTTING were faced with the same problem and managed to resolve it promptly and that GOOGLE FRANCE also managed to do so, although with some delay;

Considering that pursuant to Article L. 121-3 of the French Criminal Code, there is no crime or offence without intention to commit;

Considering that, in accordance with Article 339 of French Law no. 92-1336 of December 16, 1992, unintentional offences laid down by statute before the new French Criminal Code entered into force (which is the case for infringement of marks) are only constituted in the event where evidence of misfeasance or negligence is established;

Considering that, in this case, the fraudulent intention of GOOGLE FRANCE, which is not the main party to the offence, but the accomplice in supplying the means, may only result simply from the facts of the case being constituted;

Considering that GOOGLE FRANCE, which may not rely on any financial or technological constraints against the holders of the infringed marks, which are the result of its own choice, committed offences on three levels;

Considering that, firstly, it committed an offence for failing to carry out any preliminary checks regarding the key words reserved by its clients and its request that they do not cause prejudice to the rights of third parties is an unrealistic warranty;

Considering that, indeed, GOOGLE FRANCE cannot be bound by a general obligation of monitoring with regard to the choice of key words by operators of referenced sites and that, furthermore, the marks of the companies VIATICUM and LUTECIEL are poorly distinctive;

Considering that, all the same, GOOGLE FRANCE must be able to prohibit the use of key words that are manifestly illicit, such as those contrary to accepted standards of good behaviour or infringing well known marks or marks that it knows;

Considering that, in this case, they knew or should have known the marks of the defendant companies, which are clients of its program Adwords and use their marks as part of their advertising campaigns;

Considering that, secondly, GOOGLE FRANCE, even if it had legitimately not been aware that the companies were the holders of the contentious marks, could not offer the purchase of the words « bourse aux voyages » or « bourse de voyages » or even « bdv com » in its keyword suggestion tool, on the pretext that they were high among the most often requested key words, without carrying out a serious study of the potential rights of third parties over these words;

Considering that, thirdly, GOOGLE FRANCE was under the obligation where and insofar as it was notified of the fraudulent use of the key words, to put an immediate and full stop to such infringement;

Considering that GOOGLE FRANCE, arguing as a pretext that it could not prohibit the use of words such as « vol » (flight) or « voyage » (travel), which is true, considerably delayed, which meant that, even after the judgment of October 13, 2003, it was still possible to hit on the sales links of the competitors of VAITICUM and LUTECIEL by using hardly amended key words (for example, a singular instead of a plural);

Considering that the offences by GOOGLE FRANCE are therefore established and that it must consequently not be exempted from its liability for the infringement committed;

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