TRADEMARK VS SEARCH ENGINES IN BRAZIL

The use of competitor’s trademarks aiming to enhance results in search engines and sponsored advertisements has sparked controversy in several jurisdictions around the world. In Brazil, it has been witnessed an increase of cases involving enquires, extrajudicial notifications and court disputes.

Search engines as Google Ads sort the search results to prioritize a paying advertiser’s website over other possible results. An advertiser purchases the keywords with which it wants its website to be associated with and is also able to block others, among other possibilities.

The controversy involving search engines emerge from the practice of allowing an account holder to include a registered trademark keyword even if the account holder does not own the rights to that trademark.  Search engines usually (e.g., the use policies of Google Ads) do not check the trademark status of a keyword at the time of selection, but instead investigate claims of infringement only after receiving a complaint. Moreover, search engines may apply different policies to the selection of a trademark as a keyword depending on the region/country in which the trademark is registered.

In short, search engines may allow advertisers to promote and direct consumers to determined website via using keywords containing trademarks or trade names of third parties (including of competitors). The results usually appear at the top of a search page on the search engine because they have been sponsored or paid.

In Brazil, despite the still scarce number of rulings and absence of decisions from the courts of appeals and superior courts on the merits, in addition to the subjectivity in analyzing the matter, the courts position has been shifting (mainly in decisions vis-à-vis injunction orders) towards the understanding that the use of a registered trademark from a third party as keyword in search engines may, depending on the circumstances, be construed as a trademark infringement, and, ultimately, unfair competition.

Another common scenario which entails higher risks of a trademark infringement being characterized (based on the circumstance of misleading of consumers) occurs when, for example, Company XXX would hire a sponsored link for the expression YYY, which is already a registered trademark of the competitor. In this case, every time a consumer searches for the expression YYY it would be shown company XXX’s website first, many times accompanied by the expression ‘’buy here’’.

Within this context, and, mainly, while there is not a clearer outlining (via passing of legislation or maturing of the jurisprudence) of the requisites and parameters vis-à-vis such market practices, entrepreneurs shall keep special attention to the protection of its intellectual property rights against, depending on the circumstances, unlawful/abusive purchasing of sponsored links and/or keywords in search engines.

Even sales agents and/or authorized resellers, except when holding the express authorization for the use of third-party trademarks, may incur in infringement of intellectual property rights.

It is undoubtful that the use of search engines is essential in the development of a strong marketing strategy, however being required special attention to the scope of application of the protection granted by the trademarks law (Law 9,279/1996) and other applicable regulations.