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Hot Topic – Unfair competition: acquisition of third parties’ trademarks by Google AdWords

In a recent decision¹, the State Court of Rio de Janeiro confirmed its understanding that the acquisition of third parties’ trademarks by Google AdWords constitutes unfair competition and results in civil damages.

In this case, the e-commerce company “Groupon” filed a lawsuit against the online travel agency “Hotel Urbano”, due to infringement of its corporate name, domain name and the “Groupon” trademark. According to Groupon, Hotel Urbano acquired through Google Adwords the keyword “Groupon”, which led consumers to find, through sponsored links, results directed to the Hotel Urbano’s website.

On its defense, Hotel Urbano argued that there was no trademark infringement or unfair competition, since the parties were engaged in different businesses, and the advertising on the word “groupon” had been acquired from Google, which in theory only offers terms not registered as trademarks.

The lower court ruled partially in favor of the plaintiff, dismissing the claim for moral damages.

In judging the appeals, the Court of Appeals of Rio de Janeiro held that there was domain name and trademark infringements, as the word “Groupon” had no other meaning than the respective e-commerce company. Therefore, Hotel Urbano’s conduct constituted an act of unfair competition, reason why the online travel agency was ordered to pay moral damages of approximately USD 15,000 and material damages to be calculated during damage award procedure.

¹ Lawsuit No. 0180503-23.2014.8.19.0001