In judging SPECIAL APPEAL No. 2096417 - SP (2023/0328252-0), the rapporteur, Minister Nancy Andrighi, stated that:
"In analyzing the civil liability of internet providers for acts of unfair competition in the sponsored links market, it is not the content generated on the sponsored website that gives rise to the duty to indemnify, but rather the way in which the search provider markets its advertising services, by presenting search results that foster parasitic competition and mislead the consumer."
Indeed, Brazilian Courts have issued their recent decisions on the subject, considering the format of contracting the words to be indicated in searches for sponsored links services. Recent rulings have deemed it relevant whether the contracting method of such services considers options for exact or broad keyword matching.
Exact match refers to ads that are displayed in searches that match the exact term of the keyword or approximate variations. In other words, the ad is displayed when the search term literally or semantically coincides with the keyword chosen by the advertiser. Accordingly, ads are triggered only by searches that exactly match their keywords. In broad match, ads are displayed in searches that correspond to a plurality of situations, such as (i) keyword with or without spelling errors, (ii) synonyms and antonyms of the keyword, (iii) search terms with themes related to the keyword, and (iv) other variations that show some affinity and similarity to the keyword in question.
Thus, the recent understanding is that, under the broad match modality, there is no question of unfair competition, since there is no causal link between the conduct practiced by the service contractor and the result of the search, given that such a word is not actively chosen by the advertiser/service contractor in the aforementioned contracting format.
From this perspective, other elements make the analysis even more complex, such as cases where the keyword translates into a weak or low-distinctiveness brand. In this regard, it is worth citing the understanding of the 2nd Reserved Chamber of Business Law of the São Paulo Court of Justice, which issued the following decisions:
"INDUSTRIAL PROPERTY Mixed trademark Lawsuit seeking to inhibit the use of the trademark and domain 'decoradornet' as a search keyword by the Defendant. Official communication from Google declaring that the defendant contracted a broad match search service. Trademark and domain composed of commonly used words that describe the service provided. Evocative trademark. Possibility that internet users may find any cyber interior decoration company by typing the expressions 'decorador' [decorator] and 'internet' (or 'net'). Unfair competition not characterized. Inhibitory and indemnification claims dismissed. Appeal dismissed. Ruling: denied." (TJSP, Ap. 1081401-97.2020.8.26.0100, Rapporteur Justice Ricardo Negrão, tried on June 27, 2023, emphasis added).
"'GOOGLE ADS' SEARCH TOOL. DISTINCTION BETWEEN KEYWORD MATCH OPTIONS (EXACT MATCH OR BROAD MATCH) - Appellant seeks a court order compelling the defendants-appellees to refrain from using her trademark as a keyword in the 'GOOGLE ADS' search system, as well as compensation for moral damages. Judgment of dismissal. Plaintiff’s appeal. Not granted. 1. According to Statement XVII of the Group of Reserved Chambers of Business Law, 'The use of a nominative element of third party's registered trademark, corporate name or establishment title, endowed with sufficient distinctiveness and in the same branch of activity, as a search term for the dissemination of advertisements contracted with internet search providers, constitutes an act of unfair competition'. 2. However, the specific case does not fit into this Statement. This is because the evidence shows that there was no contracting of the expression 'GIRONET'. What may happen is the contracting of an expression that is part of the nominative brand (for example: 'net'). 3. In this respect, it is important to differentiate the keyword matching options: exact match or broad match. On the one hand, with exact match, ads are displayed in searches corresponding to the exact keyword term or approximate variations thereof. That is, the ad is displayed when the search term (expression typed by the internet user in the search field) literally or semantically coincides with the keyword chosen by the advertiser. Under this option, ads are triggered only in searches that exactly match their keywords. On the other hand, under broad match, ads can be displayed in searches that match (i) the keyword with spelling errors, (ii) synonyms of the keyword, (iii) search terms with themes related to the keyword, and (iv) other relevant variations. 4. Along these lines, Statement XVII of Group of The Specialized Chambers of Business Law makes an exception for cases where the trademark or keyword lacks sufficient distinctiveness to characterize unfair competition. Even if the contracted keyword is 'giro' or 'net', these are commonly used and descriptive expressions, lacking sufficient distinctiveness to constitute the crime of unfair competition through the parasitic use of the trademark. APPEAL DISMISSED." (TJSP, Ap. 1004346-50.2023.8.26.0590, Rapporteur Justice Sérgio Shimura, tried on April 01, 2025. Emphasis added).
In this regard, it is worth highlighting Statement XVII of the Group of Reserved Chambers of Business Law of the São Paulo Court of Justice, which states that "the use of a nominative element of third party's registered trademark, corporate name or establishment title, endowed with sufficient distinctiveness and in the same branch of activity, as a search term for the promotion of advertisements contracted with internet search providers, constitutes an act of unfair competition."
Making such a distinction in cases where the keyword constitutes a weak or low-distinctiveness trademark is relevant, since the holder cannot prevent words necessary for the identification of the market niche from being used, in the composition of keywords, by anyone, thus making an exception to the aforementioned Statement XVII.
This is particularly so because the best interpretation of the word "use" contained in the aforementioned Statement is that the illegality is substantiated in the "purchase" of a nominative element of third party's registered trademark, in its entirety (even if the trademark is deemed of low distinctiveness or "weak"), based on one of the matching methods (broad or exact).
Thus, the Courts have held that, regardless of whether the "purchase" of a keyword identical to the registered trademark of a given holder is demonstrated, in any matching modality (exact or broad), if the nominative element of the trademark is constituted by a word of common use, in the claimed market niche, and is evocative, there is no question of unfair competition and, consequently, there is no question of the duty to indemnify.
