The discussion involving use of trademark for blasting ads online intensifies

Recently, discussions about the legitimacy of using online ads to gain greater visibility in the digital market have increased and can be summarized in a single question: would it be legitimate to market search terms that coincide with competing brand names?

On the one hand, since 2018, decisions of the São Paulo Court of Justice indicate that the marketing of brands as keywords for triggering ads could be a trademark violation and unfair competition. This position has even motivated the publication of some articles on the subject in this regard (as per examples here and here).

On the other hand, there are precedents showing that the use of terms to trigger advertisements, even if they coincide with word elements of competing brands, would not constitute trademark infringement or unfair competition. This position has already been reflected in some judgments of the State Courts of Rio de Janeiro, Paraná, and even São Paulo, corroborating publications that debate the issue from a deeper and less obvious perspective (as per examples here, here and here).

According to such precedents, the use of a trademark as a keyword to trigger ads would constitute a legitimate means of contextualized advertising, more efficient from the advertising and consumerist point of view, by allowing its targeting to a specific audience and offering consumers more options for search results. By opening space to several advertisers, contextualized advertising lowers entry barriers, avoids informational asymmetry, fosters competition, and consequently benefits the consumer, who has better bases from which to make more conscious and better-informed decisions.

This line of reasoning has already been explored by foreign courts, which have reached favorable conclusions on the subject. In Brazil, however, the discussion has not yet reached a consolidated position in State Courts nor in Superior Courts. The matter continues to be locked in debate and still lacks a broader and deeper analysis by comparative case law.

The discussion is, therefore, far from being closed. There is fertile ground for new perspectives, with the expectation of progression toward freedom of initiative, fostering competition, innovation, and consumer protection.

Demarest’s Dispute Resolution, Intellectual Property and Technology, Media & Telecommunication teams are at your disposal for any clarifications and additional information that may be required.