INTELLECTUAL PROPERTY LAW
The 4th Panel of the Superior Court of Justice (STJ) ruled that there was unfair competition in the conduct of a tourism company that advertises on the internet that used a competitor's trademark as a keyword in Google's sponsored links system, to obtain privileged results in searches and direct customers to your services.
When judging the issue, unprecedented in court, the collegiate maintained the judgment of the Court of Justice of the State of São Paulo (TJSP), which sentenced the advertiser to pay moral damages of R$ 10 thousand.
The rapporteur of the special appeal, Minister Luis Felipe Salomão, stated in his vote that the company's attitude is prohibited by the Industrial Property Law. “In addition to the blatant misuse of a business name and brand name, the use of sponsored links, in the way engendered by the appellant, is conduct repressed by article 195, items III and V, of the Industrial Property Law and by article 10 bis of the Paris Union Convention for the Protection of Industrial Property”, he highlights.
The lawsuit was filed by a tourism company whose main product is the promotion of Disney trips. According to the company, it owned all the rights related to its brand, however, when a user searched on Google using its name as a keyword, the search engine showed as the first result the page of another company - provider of the same type of service. service.
In the first instance, the misuse of the plaintiff's trademark for the practice of unfair competition was recognized and the judge set the compensation for moral damages at R$ 15 thousand, an amount reduced to R$ 10 thousand by the TJSP.
In the special appeal, the defendant company maintained that attracting customers is inherent to any economic activity, especially in the context of e-commerce. According to the tourist agency sued, considering any deviation of clientele to be repressible would imply the elimination of free competition itself.
However, the rapporteur recalled that article 195 of the Industrial Property Law provides as a crime of unfair competition, among other conducts, the use of fraudulent means to divert, for one's own or someone else's benefit, the customers of another company.
Regarding the sponsored links system, Salomão pointed out that, although it is lawful to hire a service for prioritizing search results, the lack of parameters or prohibitions of keywords in advertising can result in conflicts related to intellectual property.
“Stimulating free enterprise, inside or outside the world wide web, must know limits, and it is inconceivable to recognize lawful conduct that causes confusion or purposeful association with the brand of a third party operating in the same market niche”, concluded the minister.
The Special Appeal is processed under number 1,937,989/SP