Introduction

The rise of digital marketing and paid search advertising has profoundly transformed the use of trademarks on the Internet. In particular, the purchase of keywords corresponding to third-party trademarks raises significant legal issues at the intersection of trademark law, intermediary liability, and digital law.

This article provides a structured and rigorous analysis of the conditions under which the use of trademarks as keywords is lawful, as well as the limits of the limited liability regime applicable to hosting providers in France.

Use of third-party trademarks as keywords : a regulated principle

The purchase of keywords corresponding to a third-party registered trademark, particularly in the context of paid search campaigns, is not unlawful per se. Both European and French case law have acknowledged the permissibility of such practices, provided that they respect the essential function of a trademark, namely to guarantee the origin of goods or services.

Accordingly, the use of a keyword identical to a trademark is considered lawful where it does not adversely affect that function, does not create a likelihood of confusion in the mind of the average consumer, and does not take unfair advantage of the reputation of the protected sign.

Conversely, such use becomes unlawful where the advertisement displayed creates ambiguity as to the origin of the goods or services or suggests the existence of an economic link with the trademark owner. This is particularly the case where the advertisement reproduces the third party’s trademark or exploits its reputation to divert customers. In such circumstances, courts will find an infringement of the essential function of the trademark, thereby constituting trademark infringement.

Advertiser liability : a principle of general law

An advertiser who selects a keyword corresponding to a trademark incurs direct liability, as it is deemed to be making use of the sign in the course of trade.

Such liability may arise on the basis of trademark infringement within the meaning of Articles L.713-2 et seq. of the French Intellectual Property Code, as well as on grounds of unfair competition or parasitic conduct.

Courts adopt a concrete and contextual analysis, taking into account the content of the advertisement, the perception of the average consumer, and the clarity of the commercial origin of the goods or services. The degree of reputation of the trademark is also a relevant factor, as well-known trademarks benefit from enhanced protection against undue exploitation.

The limited liability regime of hosting providers in France

The legal framework governing hosting providers derives from the French Law of June 21, 2004 on Confidence in the Digital Economy (LCEN), which transposes the EU E-Commerce Directive. This framework establishes a regime of limited liability for technical service providers.

Hosting providers are not subject to a general obligation to monitor the content they store. This principle constitutes a cornerstone of digital law, aimed at preserving innovation and the development of online services.

In practice, a search engine or advertising platform is not required to proactively verify the legality of keywords selected by advertisers. The liability of a hosting provider may only be incurred where it has actual knowledge of manifestly unlawful content and fails to act expeditiously to remove or disable access to such content. Such knowledge presupposes a sufficiently precise and legally substantiated notice, followed by a diligent response from the provider.

Conversely, it is deemed to be a publisher where it plays an active role in the selection, presentation, or promotion of content.

Accordingly, a platform involved in optimizing advertisements or actively suggesting keywords may face increased liability exposure.

hosting provider publisher

French and European case law : guiding principles

The general principle was first established by the Court of Justice of the European Union, in its ruling of March 23, 2010, Google France SARL and Google Inc. v Louis Vuitton Malletier (C-236/08).

The Court held that a referencing service provider such as Google does not make “use” of a trademark within the meaning of trademark law where it merely plays a neutral, technical, and passive role. In such circumstances, it may benefit from the limited liability regime provided for under Directive 2000/31/EC.

Under French law, this analysis has been confirmed and further clarified in a decision of the French Supreme Court dated January 20, 2015 (No. 11-28.567). The Commercial Chamber reiterated, on the one hand, the applicability of the limited liability regime to technical service providers acting as hosts, and, on the other hand, the absence of trademark infringement solely on the basis of the use of a sign as a keyword on the Internet.

In that case, SNCF alleged that several competing companies had used its trademarks, including well-known marks, as keywords in order to redirect internet users to their own websites. It also argued that the technical service provider involved could not benefit from hosting provider status due to its allegedly active role, and further claimed the existence of misleading commercial practices suggesting a commercial link.

However, the Cour rejected all of these arguments, holding that the conditions for engaging the liability of the service provider were not met and that the use of trademarks as keywords did not, in itself, constitute an infringement of trademark rights.

French courts thus follow the line of European case law by adopting a concrete approach, based on the actual role played by the service provider and on the perception of the average internet user regarding the origin of the goods or services.

SEO and legal best practices for businesses

An effective strategy requires constant vigilance in the drafting of advertisements and in the use of third-party distinctive signs. Businesses must avoid any ambiguity, refrain from reproducing competitors’ trademarks in advertising content, and implement monitoring and rapid response mechanisms in the event of infringement. A structured approach enables the reconciliation of marketing performance with legal certainty.

Conclusion

The use of third-party trademarks as keywords constitutes a powerful strategic tool, yet one that is strictly regulated. French and European law strike a balance between freedom of online commerce and the protection of intellectual property rights, clearly distinguishing between advertiser liability and that of technical intermediaries.

Dreyfus & Associés assists its clients in managing complex intellectual property matters by providing tailored advice and comprehensive operational support for the full protection of intellectual property rights.

Dreyfus & Associés works in partnership with a global network of specialized intellectual property lawyers.

Nathalie Dreyfus with the support of the entire Dreyfus team.

Q&A

1. Can a company bring legal action even if its trademark does not appear in the advertisement?
Yes. Courts recognize that infringement may be established even without visible reproduction of the sign, where the keyword triggers advertising that exploits the economic value of the trademark.

2. Is achieving a higher ranking than a competitor in sponsored results on the Internet unlawful?
No. Ranking itself is not unlawful; what matters is how the advertisement is perceived by the internet user.

3. Can a platform refuse to remove a contested advertisement?
Yes, where the notice is insufficiently substantiated or does not establish the manifestly unlawful nature of the content. Hosting providers retain a degree of discretion when processing notices.

4. Is the use of similar (but not identical) keywords risky?
Yes. The use of similar signs may incur liability where it creates a likelihood of confusion or exploits the proximity to a protected trademark.

5. Is an action based on unfair competition more effective than trademark infringement?
In certain cases, yes. It allows courts to address conduct that does not strictly meet the criteria for infringement but nonetheless constitutes unfair appropriation of another’s business or parasitic behavior.

This publication is intended for general public guidance and to highlight issues. It is not intended to apply to specific circumstances or to constitute legal advice.