Extraterritorial Effect of a Preliminary Injunction to Stop Infringing use of Trademark

In a decision issued on November 10, 2022, in re “Geniver SAS v. Podios SRL” –made public only recently because of the confidentiality of preliminary injunctions–, Division I of the Federal Court of Appeals ordered Podios to not use Geniver’s trademark “PAMPA DIRECT” in the links to access the defendant’s website, regardless of the location where the user is accessing such website through Google’s search engines in different countries.

According to the opening motion, Geniver is an Argentinian company that commercializes Argentinian products and ships them overseas under the trade name and trademark “Pampa Direct”. Geniver found that their competitor Podios, who trades under the name “ArgentiNow” and operates the website www.argentinow.com, was using Geniver’s trademark “PAMPA DIRECT” as a keyword in Google AdWords and in the content of the ad. Geniver argued that such use was an act of unfair competition.

The first instance court granted the preliminary injunction, ordered Podios to refrain from using the trademark “PAMPA DIRECT” in any links to access the website www.argentinow.com, and fixed a bond to cover eventual damages.

Geniver considered that the court order did not extend to those ads that could be accessed from Uruguay or the USA. Therefore, it filed a petition for clarification. The court understood that the order was clear and that Geniver could not request the cease of use of the trademark in other countries when it only owned trademark rights in Argentina.

Geniver appealed the decision and argued that the commercial activities of both companies took place in Argentina –where both Geniver and Podios are located– and that the services are offered and provided from Argentina. Thus, it was the local courts that should decide on the illicit behaviors carried out in Argentina. However, Geniver clarified that they were not aggrieved for the use of the trademark as keyword, provided that the trademark did not appear in the links to access Podios’ website.

The court of appeals understood that Geniver sought to extend the injunction to this type of ads, regardless of the country where the search was made:

The court of appeals considered that Geniver met the fumus bonis iuris (likelihood of success on the merits of the case) requirement, as both companies are in Argentina, both operate e-commerce websites offering similar services, and the questioned ads have effects in Argentina. Including the “PAMPA DIRECT” trademark in the ads was therefore not justified.

The court of appeals thus modified the scope of the first instance decision and ordered Podios to refrain from using the trademark “PAMPA DIRECT” on the Internet, as part of any link to access its website, and regardless of the location where users were accessing such website through the search engines www.google.com.ar and www.google.com.

This decision –provisional, considering the nature of preliminary injunctions– is relevant, as this is one of the few cases in which the Federal Court of Appeals has granted extraterritorial effects to a trademark infringement dispute.

Regarding the issue of keywords and trademark infringement, the Argentine Supreme Court will soon decide on the leading case “Organización Veraz”, where it is debated whether the use of trademarks as keywords constitute trademark infringement.

A version of this article first appeared in the INTA Bulletin on July 5, 2023, and is reprinted with the permission of the International Trademark Association (INTA).