3 Aprile 2018

The Milan court on the use of trademarks in keyword advertising

On 25 January 2018, the Specialised IP Section of the Court of Milan issued its judgment (here), on the use of others’ trademarks as keywords, metatags and domain names for the purposes of online advertising. Barilla, the multinational food company, brought actions for trademark infringement against two entities that manufactured pillows shaped in the form of certain of Barilla’s biscuits and marketed them under names resembling the corresponding Barilla trademarks. In its judgment, the Milan court, recalling certain landmark CJEU decisions (e.g. “Google France and Google”, 23 March 2010, cases C-236/08 and C-238/08; “L’Oréal” 18 June 2009, case C-487/07; “Portakabin”, 8 July 2010, case C-558/08) ruled that the use of others’ trademarks for online advertising is unlawful when not aimed at offering consumers real alternatives to certain (specifically Barilla’s) products, but to exploit the popularity of well-known trademarks by promoting products that slavishly imitate those of the trademarks’ owner.