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Thursday, 25 March 2010

Keywords again -- but this time Google's not a party

The IPKat has just taken a look at Case C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günter Guni and trekking.at Reisen GmbH, a reference for a preliminary ruling from the Oberster Gerichtshof (Austria) dating back to June 2008 but sadly unobserved by most European trade mark-watchers. This reference wasn't even given the dignity of an Advocate General's Opinion -- a sure sign that the Court of Justice doesn't think it's a very hard one to resolve.


So what happened here? It's another AdWords case, involving Google's "paid referencing service" which enables any economic operator, by means of the reservation of a keyword, to place a link to its own advertisement which is flagged as a "sponsored link", when the user of its search engine employs that keywords as a search term, in addition to the "natural results" of the search which the user gets irrespective of whether the keyword is an AdWord.

BergSpechte owns the figurative mark featured top-right in this post, which is registered in Classes 25 (clothing), 39 (travel services) and 41 (various teaching, entertainment and sporting services). Another company, trekking.at Reisen, competed with BergSpechte in providing ‘outdoor’ tours. That company purchased ‘Edi Koblmüller’ and ‘Bergspechte’ as AdWords that generated the appearance of its own advertisements as sponsored links. BergSpechte sought and obtained an interim injunction from the Landesgericht Wels and protective measures were imposed on trekking.at Reisen, prohibiting it from directing users to its own home page by a link on the pages containing lists of hits obtained using internet search engines by entering the search terms ‘Edi Koblmüller’ and/or ‘Bergspechte’. The action eventually reached the Austrian Oberster Gerichtshof (Supreme Court) which referred the following questions for a preliminary ruling:

"1. Must Article 5(1) of the ... Council Directive 89/104 ... be interpreted as meaning that a trade mark is used in a manner reserved for the proprietor of the trade mark if the trade mark or a sign similar to it (such as the word component of a word and figurative trade mark) is reserved as a keyword with a search engine operator and advertising for identical or similar goods or services therefore appears on the screen when the trade mark or the sign similar to it is entered as a search term?
2. If the answer to Question 1 is yes:
(A) Is the trade mark proprietor's exclusive right infringed by the utilisation of a search term identical with the trade mark for an advertisement for identical goods or services, regardless of whether the accessed advertisement appears in the list of hits or in a separate advertising block and whether it is marked as a 'sponsored link'?
(B) In respect of the utilisation of a sign identical with the trade mark for similar goods or services, or the utilisation of a sign similar to the trade mark for identical or similar goods or services, is the fact that the advertisement is marked as a 'sponsored link' and/or appears not in the list of hits but in a separate advertising block sufficient to exclude any likelihood of confusion?"
This morning the Court of Justice ruled as follows:
"Article 5(1) ... must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with or similar to that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party".
This ruling relates only to the first referred question since the Court concluded that an answer the second would not be useful for resolving the underlying dispute. The Court's position here is unsurprising in light of Tuesday's ruling in Google (see here and here), which it cites as authority. Indeed, if you think you might be suffering from déjà vu, you might note the similarity between the paragraph above and the first paragraph of the Court's Google ruling.

2 comments:

Anonymous said...

Stupid question from a trademark layman: would it be possible to register the use of a trademark in web page in association with products? I often see all descriptions of advertising material entered entered in the trademark registrations together with the main product it is supposed to represent, for example scale models or key rings in addition to the automobile which the brand is supposed to distinguish. An explicit claim might help prevent third parties from hijacking a trademark to attract traffic, but then, what about comparative advertising?

Filemot said...

On Tuesday we were only dealing with Adwords that were Identical - today the similar to the trademark has crept in - Now that is a major difference because yesterday I could typosquat on Adwords and now I cannot. The Google Adwords team also treat identity as being important when dealing with their complaints procedure

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