The Civil Chamber of the Supreme Court has confirmed that the old company Vitaldent must pay compensation of 561,240 euros to Grupo Ilusión de Ortodoncistas SL for having used the competing brand «Clínicas Ortodoncis» in its Google Ads campaign (at that time Google Adwords) without having the authorization of the owner, which redirected searches to a result where the defendant’s franchise network of dental clinics was advertised.
Use of a third party brand in an Adwords campaign
The sentence declares that the events that occurred in September 2012, They were certified by notarial deed. The Chamber appreciates that the services offered by the defendant on its website, are identical to those offered by the plaintiff; Likewise, the search term used by the defendant to contract in Google Adword is the same as the plaintiff’s brand.
Having used the plaintiff’s brand in Adwords, the advertisement with the link to the Vitaldent website was preceded by the mention Ortondoncis Clinic. For this reason, the Chamber considers the conclusion of the sentence to be correct, where it is stated that “Use was made of mark not consented to by its owner, to identify identical services, and that this use undermines the indicator function of the business origin of the services offered”.
According to the doctrine of the Court of Justice of the European Union (CJEU) “the advertising offered barely allows the average Internet user determine if the services included in the advertisement come from the owner of the trademark or from a company economically linked to it or if, on the contrary, they come from a third party”.
The amount of compensation imposed on Vitaldent for trademark infringement is determined by article 43.5 of the Trademark Law: 1% of the total business figure made by the offender with the illegally marked products or services. In this case, the turnover to calculate it refers to all illegally marked services: all those that have been proven in the instance that they were advertised by infringing the plaintiff’s trademark (implants, orthodontics, pediatric dentistry and dental aesthetics), without it being appropriate to distinguish which were actually provided as a result of the announcement and which were not.
To avoid confusion, from the administration of the Vitaldent Group they clarify that the case occurred in 2012, under the old management. And they point out that “the current company is not related to this matter in any way” and that today “Vitaldent is backed by a powerful and growing capital investment firm, where innovation, excellence in care quality and transparency are its priorities.”
The precedent of Interflora
Actually, this is a really newsworthy case, because It is not usual that, taken to their final instances, these procedures end up resulting in a final conviction. The most important case and the one that has set the greatest precedent in trademark infringement is the one that refers to Interflora and others vs Marks & Spencer plc and others (M&S), which in fact has served as the basis for the resolution of this case. The High Court of England and Wales issued its ruling in favor of the company Interflora, which filed its lawsuit in 2008. M&S used as “Interflora” in their Google Adwords campaign (as well as variants of the term) so users were incorrectly led to believe that the two companies were related.
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