Keywords and Trademark Infringement

On July 2, 2024, Division I of the Federal Court of Appeals in Civil and Commercial Matters dismissed an appeal Google Argentina SRL and Google LLC had filed in a trademark infringement proceeding. The dispute was focused on the cease of use of the trademark “BUTTMAN” as a keyword in the Google AdWords service by an unknown company, as well as Google’s refusal to provide information about the company that bid on the plaintiff’s trademark.

Buttman Argentina SA, owner of the trademark “BUTTMAN,” requested a preliminary injunction under the terms of article 50 of TRIPS to order Google to stop using  the trademark “BUTTMAN” and to identify those responsible for the damages arising from the use of its trademark.

The plaintiff argued that competitors were using its trademark without authorization as a keyword in Google sponsored links (AdWords), thus diverting potential customers to their virtual stores, where they offered products identical to those Buttman offers. The plaintiff further argued that this was a trademark infringement and an act of unfair competition.

The first instance court ordered Google Argentina SRL and Google LLC to stop using the trademark “BUTTMAN,” to refrain from marketing it as a keyword, and to inform the person or company responsible for bidding on such keyword. The decision was based on Buttman's ownership of the trademark and its exclusive right of use, which allowed it to request preliminary injunctions.

Google appealed the decision and argued that it did not use or market the trademark “BUTTMAN” as an AdWord and that a search for the term only returned a sponsored link of the plaintiff's website. Further, Google pointed out that identifying the URLs of the advertisements without the identification of the affected party is contrary to the case law on the matter.

The Court of Appeals declared void the part of the appeal on the cease of use of the trademark due to the lack of adequate grounds, since Google did not argue against the existence of an infringement of the trademark right of the petitioner. Furthermore, the Court rejected Google’s appeal regarding the request for information, since it was not reasonable that Google could not provide the information of the parties using its service, and therefore ordered Google to provide it.