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Two of our regular Kats are currently on blogging sabbaticals. They are David Brophy and Catherine Lee.

Thursday, 16 February 2012

United by an AdWord, divided by a common language: Austria, Germany and Wintersteiger

What the IPKat doesn't like
about skiiing: once you've
reached the top,
the only way is down
If you thought that the stream of AdWord cases which has flowed through the European Union's leading court in the past couple of years was about to dry up, prepare for a little surprise.  Advocate General Pedro Cruz Villalon delivered a pleasantly brief and focused Opinion this morning in a reference for a preliminary ruling that this Kat really found disconcertingly difficult, the keenly-awaited litigation in Case C‑523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH -- dispute on which the Court of Justice of the European Union was asked for guidance by the Oberster Gerichtshof, Austria.

What was this dispute all about? Austria-based Wintersteiger, which made and sold ski and snowboard servicing tools, together with replacement parts and accessories internationally, had held the Austrian trade mark WINTERSTEIGER since 1993. That trade mark is protected in neighbouring Germany too. German-based Products 4U made and sold, inter alia, accessories forWintersteiger's tools.  Wintersteiger did not sell or authorise the sale of its products by Products 4U. Nevertheless, Products 4U registered ‘Wintersteiger’ as a Google AdWord in respect of searches carried out via the top-level domain for Germany (‘.de’).

Whenever ‘Wintersteiger’ was entered into the Google search engine for the ‘.de’ top-level domain, an advertising link with the heading ‘Advertisement’ appeared on the right-hand side of the page in addition to a link to Wintersteiger’s website. The text of the advertisement included expressions such as the following: ‘ski workshop accessories’, ‘ski and snowboard tools’, and ‘maintenance and repair’. Clicking on the advertising link directed the user to a section of the Products 4U website entitled ‘Wintersteiger Accessories’.

While Google ran an Austrian top-level domain (‘.at’), the internet site www.google.de could also accessed in Austria. This is significant if you bear in mind that the two countries share the same language.

Wintersteiger brought an action for an injunction in Austria, together with an application for protective measures, requiring Products 4U to stop using the trade mark WINTERSTEIGER as an AdWord on the google.de search engine. Initially this application was ruled inadmissible on the grounds of lack of international jurisdiction in that, since the AdWord concerned was limited to google.de, there was no sufficient connection with Austrian territory. On appeal, the Oberlandesgericht Linz took the opposite view and said there was jurisdiction, but still dismissed the action as to the substance. A further appeal to the Oberster Gerichtshof resulted in that court referring the following questions to the Court of Justice for a preliminary ruling:

‘1. In the case of an alleged infringement by a person established in another Member State of a trade mark granted in the State of the court seised through the use of a keyword (AdWord) identical to that trade mark in an internet search engine which offers its services under various country-specific top-level domains, is the phrase “place where the harmful event occurred or may occur” in Article 5(3) of Regulation ...  44/2001 (‘the Brussels I Regulation’) to be interpreted as meaning that:

1.1. jurisdiction is established only if the keyword is used on the search engine website the top-level domain of which is that of the State of the court seised;

1.2. jurisdiction is established only if the search engine website on which the keyword is used can be accessed in the State of the court seised;

1.3. jurisdiction is dependent on the satisfaction of other requirements additional to the accessibility of the website?

2. If Question 1.3 is answered in the affirmative:

Which criteria are to be used to determine whether jurisdiction under Article 5(3) of the Brussels I Regulation is established where a trade mark granted in the State of the court seised is used as an AdWord on a search engine website with a country-specific top-level domain different from that of the State of the court seised?’
This morning the Advocate General answered all this questions quite simply:
‘Where conduct occurs via the internet which is liable to infringe a national trade mark registered in a Member State, Article 5(3) of Regulation No 44/2001 must be interpreted as meaning that it attributes jurisdiction:

– to the courts of the Member State in which the trade mark is registered [that's presumably good news for Wintersteiger, which has registered its name as a trade mark both in Austria and in Germany],

– and to the courts of the Member State where the means necessary to produce an actual infringement of a trade mark registered in another Member State are used.[The AG says, in [26]: " ... it is also possible under Article 5(3) of Regulation No 44/2001 to establish the jurisdiction of the courts of the State where the event giving rise to the damage occurred. In the specific context of intellectual property, I believe that that is the place where the means necessary to produce an actual infringement of a mark were used. That view [takes account] of the use of those means when an actual infringement of a trade mark was caused in another Member State by means of the internet. Admittedly, in most cases that place will be the same as the defendant’s domicile, but ... situations may arise in which the defendant’s domicile and the place of the event giving rise to the damage are not in the same State"]
This is the point at which Kat gets confused.  When damage is done to a trade mark owner's interest in his registered trade mark, there may be a chain of several events giving rise to the damage, each possibly being in a different country. These events will include causae sine qua non and causae causantes (causes of the conditions under which the damage was able to be inflicted and causes of the events that directly inflict the damage).  Perhaps the Court of Justice will clarify this when it comes to consider the form in which it delivers its ruling.

Cats 4U here
Apr├Ęs-ski here
Skiiing with Natasha here

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