For the half-year to 31 December 2014, the IPKat's regular team is supplemented by contributions from guest bloggers Rebecca Gulbul, Lucas Michels and Marie-Andrée Weiss.

Regular round-ups of the previous week's blogposts are kindly compiled by Alberto Bellan.

Monday, 1 November 2010

After Google France et al: when is an ad "vague"?

Some of our readers may know that this particular Kat has a particular interest in Keyword Advertising ("AdWords") related decisions of all shapes and sizes - a passion (or shall we say: an obsession) she shares with Austrian IP lawyer and academic Maximilian "Max" Schubert otherwise known as the blogger austrotrabant.

Max has conducted in-depth research in this field of trade mark law and prompted by Jeremy's report on Och-Ziff Management Europe Ltd & Anor v Och Capital LLP & Anor [2010] EWHC 2599 (Ch), decided by specialist IP judge Mr Justice Arnold (Chancery Division, England and Wales) on 20 October 2010 (see the IPKat report here), has come up with an intriguing chart (below) that summarises the ECJ's recent guidance on AdWords as well as its potential application.

To provide some context and jog your memory: we have of course all read the ECJ's recent AdWords related decisions in Google France, Die BergSpechte, Portakabin, Eis.de and thus recall that in its guidance to the national courts provided in Google France, the ECJ set out that an adverse affect - and consequently trade mark infringement - would have to be assumed in two circumstances:

(i) where a third party’s ad suggests that there is an economic link between that third party and the trade mark proprietor; or
(ii) where an ad is so vague concerning the origin of the goods or services that a normally informed and reasonably attentive internet user is unable to determine, on the basis of the advertising link and the commercial message attached to it, whether the advertiser is an unrelated third party or economically linked to that trade mark proprietor.

Consequently, after Google France it was now for the national courts to determine their own case law based on the ECJ’s principles which could lead to very different interpretations from the various national courts when it comes to question whether an ad is “vague” or not.
Max and this Kat are now debating (see here) how all these cases fit together. While this all is admittedly a trifle geeky, this Kat would be very interested to know whether our readers agree or disagree with Max' conclusions.






Please post your comments below.
To have a look at Max' entertaining presentation on AdWords "It's the ad-text, stupid", please click here (German) and here (English).

Regarding "vagueness", see here

4 comments:

Anonymous said...

I too am developing something of an obsession with AdWords. Both links to Max Presentation are actually to the German version, please could you provide the link to the English version.

Birgit Clark said...

This has now been fixed - with many thanks for pointing this out (you know who you are).

Lassi said...

I was about to disagree with the visual depiction but having read the "debate" it seems you both agree on the disagreement with it already. Obviously, "not having done everything to rule out any chance of confusion" cannot be automatically defined as "vague" to the extent of Google France para 90.

The CJEU should next time round release for example 15 hypothetical screenshots illustrating legitimate and illegitimate use via some "vague" connection to the case in question. (Rules of Procedure just might allow that...) Ads such as trekking.at (thanks to Austrotrabant for the coverage) would surely pass the legitimacy threshold.

Birgit Clark said...

@Lassi: "The CJEU should next time round release for example 15 hypothetical screenshots illustrating legitimate and illegitimate use via some "vague" connection to the case in question."

Your suggestion re screenshots reminds me a bit of what Lord Hoffman said in the Chartbrook Persimmon case about giving some examples of how to calculate a certain formula.

I think it makes perfect sense and would be ever so pragmatic - but do we think the court would do this?

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