On 16 November 2015, the Mons Court of Appeal (the "Court") handed down a judgment in a dispute between Verabel, a trademark holder, and Verandas Confort, which used the word 'Verabel' as a Google AdWord.

Firstly, Verabel contended that the use by Verandas Confort of its trademark as an AdWord infringed Article 2.20.1 a) of the Benelux Convention on Intellectual Property (the "BCIP") which permits the trademark holder to prevent any third party from "using in business a sign that is identical to the trademark for goods or services that are identical to those for which the trademark is registered".

The Court noted that the criterion of identity of the sign and the trademark must be interpreted strictly in the sense that there can only be identity between the sign and the trademark if the former reproduces, without any modification or addition, all the elements constituting the latter. As the trademark registered by Verabel was a complex trademark consisting of both verbal and figurative elements and the AdWord 'Verabel' only consisted of a verbal element, the Court dismissed Verabel's first claim.

Secondly, Verabel availed itself of the prohibition provided for by Article 2.20.1 b) of the BCIP which authorises the trademark holder to prevent any third party from "using in business a sign in respect of which, because it is identical or similar to the trademark and because the goods or services covered by the trademark and the sign are identical or similar, there is a risk of confusion in the mind of the public which includes the risk of association between the sign and the trademark".

Referring to the decisions of the Court of Justice of the European Union ("ECJ") in Google France (See, VBB on Business Law, Volume 2010, No. 3, p. 6 and 7, available at www.vbb.com) and Interflora (See, VBB on Business Law, Volume 2011, No. 9, p.3 and 4, available at www.vbb.com), the Court recalled that the use of a third party's trademark as an AdWord can only be prohibited to the extent that such use is liable to cause detriment to any of the functions of the trademark. These functions of the trademark include, inter alia, the essential function of indicating the origin of goods or services. According to the ECJ, that essential function is affected if the use of the sign suggests an economic link between the advertising company and the holder of the trademark, or if it is unclear to the normal internet user whether there is such an economic link.

Applying this case law, the Court went on to assess whether, in the case at hand, it was impossible, or at least difficult, for an average internet user to ascertain the origin of the products advertised by Verandas Confort.

The Court noted that because verandas are subject to isolated purchases, the brand recognition bears little relevance. As a consequence, the Court found that consumers pay little attention to advertisements for these types of products and have limited knowledge of the operators active on the market. Hence, they are unlikely to know whether the operators only offer their products or products of other brands as well.

Given that the website of Verandas Confort is the first website to appear when using the word 'Verabel' in Google's search tool, the Court held that internet users are led to believe that there is a link between the advertising company, Verandas Confort, and the trademark holder, Verabel. According to the Court, it is irrelevant in that regard that the link to the website of Verandas Confort indicates "Ad" and that the content of its website contains no reference to Verabel.

The Court therefore concluded that the AdWord Verabel created likelihood of confusion between the goods concerned and infringed the trademark's function of origin. As a result, Verandas Confort was ordered to cease using the AdWord.

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