By judgment dated 11 July 2013 and issued following procedure C-C 657/11 (Belgian Electronic Sorting Technology NV v Peelears and Visys NV hereinafter “Visys”), the Court of Justice of the European Union (CJEU) contributed an additional piece in the puzzle of so-called “digital rights”, by applying the traditional legal concept of advertising in the digital environment.
The query arose in a dispute fomented by a company that produces machines and sorting lines for laser technology, the Belgian Eletronic Sorting Technology NV, also known as “Best Nv”, against its competitor Visys NV. The competitor had: (a) registered the domain name “www.bestlasersorter.com” loading web pages identical to those available through other domains of Visys, i.e. “www.visys.be” and www.visysglobal.be; and (b) inserted in the string of the source code of their corporate websites, several key-metatags coinciding with the trademark “Best” of the plaintiff Best Nv and with the registered names of the plaintiff’s main products (e.g. Helius Sorter, LS9000, Genius Sorter, Best + Helius, Best + Genius, Best nv).
According to the plaintiff, Visys’ conduct constituted both trademark infringement and violation of the rules concerning misleading and comparative advertising.
In particular, the CJEU was asked to interpret the concept of “advertising” under art. 2 of Directive 84/450/EEC and art. 2 of Directive 2006/114/EC, well-defined as “any form of message in connection with a trade, business, craft or profession in order to promote the supply of goods or services, including immovable property, rights and obligations”, in order to determine whether the above-mentioned term does or does not include the registration and use of a domain name and the use of metatag in the metadata of a website.
Primarily, the Court pointed out that with the phrase “any form of message”, the EU legislature intentionally adopted a broad definition of advertising. Therefore, advertising may assume many diversified forms. In order to determine whether a certain procedure constitutes a form of advertising, it is necessary to look at the purpose of the above Directives, which consists in protecting experts against misleading advertising and its unfair consequences and in establishing the lawfulness conditions of comparative advertising.
In view of the expansive definition of “advertising”, the CJEU decided that while the sole registration of a domain name is purely a formal act and therefore not necessarily an application of the directives on advertising, its subsequent use by the company may constitute a form of advertising message indistinguishable from general advertising. Its purpose is to promote the supply of the products or services of the domain name’s holder provided that it advises the web users that by typing the domain name “bestlasersorter” they will find the best sorter systems for laser technology.
A similar reasoning is proposed regarding the use of keyword metatags inserted into the source code of a website. In essence, -the Court stated, through the use of metatags the company, by means of search engines, informs the public that the web page in which those metatags are inserted has content pertaining to the researched keyword (and in synchronization with the metatag).
In particular, in this case, by using metatags corresponding to the business name or the registered names of Best’s products, Visys informed users that its web site contains information and offers concerning Best’s products and thereupon proposed their alternative solutions.
The use of key-metatags is therefore considered a form of advertising, pursuant to art. 2 of both above-mentioned Directives because it is clearly a promotional strategy to encourage the web customer to visit the site of the user of metatags and then promote interest in the products or services of the latter, offered alternatives to those actually sought by the web customer.
In conclusion, the use of a metatag or a domain name containing the name or trademark of a competitor company or the registered name of one or more products of the same competitor, falls within the concept of advertising under art. 2 of Directive 84/450 and 2006/14. For this reason it could be considered misleading advertising under those directives whenever it “deceives or is likely to deceive the persons to whom it is addressed or whom it reaches and which, by reason of its deceptive nature, is likely to affect their economic behaviour or which, for those reasons, injures or is likely to injure a competitor”.
Based on the judgment at issue, the CJEU, in accordance with the mentioned Directives concerning misleading and comparative advertising, provides for an additional protection measure against the abusive use of third-party’s distinguishing marks on the Internet and reiterates, once again, its role as a reference for the invocation of traditional categories of law and their application to the digital environment.
in cooperation with Marco Vittorio Tieghi