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12 January 2015
Several courts, including the Supreme Court of Justice, have recently issued a series of decisions which have had a significant impact on IP rights, new technologies and their legal regulation.
On July 3 2012 Division 2 of the Federal Court of Appeals reversed an injunction issued against Google Inc and Google Argentina SRL in connection with the unauthorised use of a registered trademark (Los Grobo Agropecuaria SA v SOLO10 COM SA).
Los Grobo Agropecuaria SA, which owns the trademark registrations for GRUPO LOS GROBO in Classes 35 and 36, detected the unauthorised use of its brand on the website www.crediagro.com. The court of first instance granted an injunction as requested. Google Inc and Google Argentina SRL challenged this decision, which was ultimately reversed on appeal.
In so deciding, the court of appeals held that an internet search engine's activity does not amount to trademark use that is capable of infringing the exclusive rights of a registered trademark owner. In addition, the court ruled that the injunction granted at first instance was excessively broad, in that it forced Google to monitor the content of all websites that referred to the plaintiff's trademarks in any way.
This case reinforces the rule that anyone seeking an injunction to block access to allegedly infringing content bears the burden of clearly identifying the relevant websites.
On October 24 2013 the first-instance decision in Teve Compras 2001 SRL v Mercado Libre SA was amended by Division 1 of the Federal Court of Appeals in Civil and Commercial Matters. In making its decision, the court considered the evidence of a computer expert, who stated that although Mercado Libre could block certain links located on other sites from its own site, this was very complex due to the volume of information published and the changing nature of the media.
In turn, Mercado Libre had stated that it had no objection to preventing the dissemination of detailed content as specified to it and cancelling users' ads when required by the trademark owner or when specifically ordered by the court. However, the company found it impossible to exert previous control over possible violations of third-party rights.
In this regard, and in accordance with previous rulings, the need is established for a specific order that allows for reasonable compliance by an internet service provider, instead of a demand for preventive control or compliance with a generic order in relation to ceasing the use of the trademark.
On October 28 2014 the Supreme Court issued a decision relating to the cases that referred to the liability of search engines regarding the content of websites published by third parties.
At the time dozens of contradictory rulings (primarily relating to intimacy or privacy issues and image rights) had been issued. Some of these rulings relieved search engines of liability, while others ascribed liability to them.
In Rodríguez, María Belén v Google Inc (a case that was subsequently extended against Yahoo de Argentina SRL), the plaintiff held that the commercial and unauthorised use of her image had taken place and that her personal and non-transferable rights had been violated, as the image had been linked to certain web pages with erotic and/or pornographic content. The Supreme Court decided that search engines have no liability for any content that they index. This decision consequently establishes a final criterion in the sense that search engines are not responsible for the content of websites published by third parties.
For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100), fax (+54 11 4311 5675) or email (email@example.com). The Obligado & Cia website can be accessed at www.obligado.com.
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