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Case Details

Case Details
National ID C‑657/11
Member State European Union
Common Name link
Decision type Court of Justice decision
Decision date 11/07/2013
Court European Court of Justice
Subject
Plaintiff Belgian Electronic Sorting Technology NV
Defendant Bert Peelaers and Visys NV
Keywords advertising, domain name, meta tag, misleading advertising, scope of the Directive

Misleading and Comparative Advertising Directive, Article 2, (a)

Article 2(a) of Directive 2006/114 must be interpreted as meaning that the term ‘advertising’, as defined by that provision, covers, in a situation such as that at issue in the main proceedings, the use of a domain name and that of metatags in a website’s metadata. By contrast, the registration of a domain name, as such, is not encompassed by that term.
Defendants are producers, manufacturers and distributors of sorting machines and sorting systems incorporating laser-technology.

On 3 January 2007, the first defendant registered, on behalf of the second defendant, the domain name ‘www.bestlasersorter.com’. The content of the website hosted under that domain name is identical to that of the second defendant's usual websites, accessible under the domain names ‘www.visys.be’ and ‘www.visysglobal.be’.

On 4 April 2008 plaintiff applied for the Benelux figurative trade mark BEST for goods and services in Classes 7, 9, 40 and 42 of the Nice Agreement of 15 June 1957 concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, as revised and amended.

On 23 April 2008 a court official established that, when the words ‘Best Laser Sorter’ were entered in the search engine ‘www.google.be’, the second search result to appear, directly after the plaintiff's website, was a link to the second defendant's website and that the latter used for its websites the following metatags: ‘Helius sorter, LS9000, Genius sorter, Best+Helius, Best+Genius, … Best nv’.

As it considered that the registration and use of the domain name ‘www.bestlasersorter.com’ and the use of those metadata infringed its trade mark and trade name and constituted infringements of the law concerning misleading and comparative advertising and the law concerning the unlawful registration of domain names, plaintiff brought, on 30 April 2008, proceedings against the defendants, seeking an order prohibiting those alleged infringements and offences. In response to those proceedings, the defendants lodged a counterclaim seeking annulment of the Benelux figurative mark BEST.

By judgment of 16 September 2008, the President of the Rechtbank van Koophandel te Antwerpen (Antwerp Commercial Court) (Belgium) declared unfounded the claims brought by the plaintiff other than the claim alleging a breach, by the use of the metatags in question, of the law on comparative and misleading advertising. He also dismissed the counterclaim brought by the defendants.

In an appeal brought by plaintiff and a cross-appeal by the defendants, the Hof van Beroep te Antwerpen (Antwerp Court of Appeal), by judgment of 21 December 2009, dismissed in their entirety the claims brought by the plaintiff, including the claim alleging a breach of the rules concerning misleading and comparative advertising, and cancelled the Benelux figurative mark BEST on the ground that it lacked distinctive character.

The plaintiff lodged an appeal on a point of law against that judgment before the referring court. By judgment of 8 December 2011, that court rejected the grounds of appeal raised by the plaintiff, with the exception of that alleging infringement of the provisions on comparative and misleading advertising.

In those circumstances, the Hof van Cassatie (Court of Cassation) decided to stay proceedings and to refer a question to the Court.
Must Article 2(a) of Directive 2006/114 be interpreted as meaning that the term ‘advertising’, as defined by that provision, covers, in a situation such as that at issue in the main proceedings, the registration or use of a domain name and that of metatags in a website’s metadata?
The court based its decision primarily on the broad definition of advertising - representation in any form made in connection with a trade, business, craft or profession in order to promote the supply of goods or services - as set out in Article 2(a) of the Directive. The court then assessed whether a 'form of representation' was made 'in order to promote the supply of goods or services’ in relation to registration and use of a domain name and of metatags in a website's metadata.

Regarding registration of a domain name, the court stated that the mere registration of a domain name does not automatically mean that it will then actually be used to create a website and that, consequently, it will be possible for internet users to become aware of that domain name. In itself, it does not contain any advertising representation but constitutes, at most, a restriction on the communication opportunities of that competitor, which may, where appropriate, be penalised under other legal provisions.

Regarding the use of a domain name, the court stated that the domain names such as those at issue in the main proceedings clearly intended to promote the supply of the goods or services of the domain name holder, as the use of the website www.bestlasersorter.com was aimed at hosting content identical to the defendant's usual websites. Furthermore, such use of a domain name, which makes reference to certain goods or services or to the trade name of a company, constitutes a form of representation that is made to potential consumers and suggests to them that they will find, under that name, a website relating to those goods or services, or relating to that company.

Regarding the use of metatags in a website's metadata, the court stated that insofar as the use of metatags corresponding to the name of a competitor’s goods and its trade name in the programming code of a website has, therefore, the consequence that it is suggested to the internet user who enters one of those names or that trade name as a search term that that site is related to his search, such use must be considered as a form of representation within the meaning of Article 2(a) of Directive 2006/114. There is, furthermore, no doubt that such use of metatags is intended to promote the supply of goods or services of the metatag user.
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The court referred the case back to the national court.