tag:blogger.com,1999:blog-5574479.post7180256143199029667..comments2024-03-29T06:53:23.405+00:00Comments on The IPKat: Sudden outbreak of common sense? "Initial interest confusion" part of EU trade mark law, says judgeVerónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger6125tag:blogger.com,1999:blog-5574479.post-20185267229755563692010-11-05T14:33:46.650+00:002010-11-05T14:33:46.650+00:00Thanks for the intriguing discussion above. I too ...Thanks for the intriguing discussion above. I too have great interest in this topic.<br />Mr Justice Arnold is right to state that the ECJ has adopted at least some sort of initial interest confusion doctrine, whether that is a good development or not. <br />I agree with the commentators above that the Court has not given any direct clues about the definition of “vagueness”. However, from a policy perspective, the Court seems to allow the use of TMs as keywords provided the advertiser is identifiable. (It denies an adverse effect on the advertising function, refuses to discuss the other TM functions, and relieves Google from primary liability.) <br />But if - what austrotrabant calls - option “D” is true, it becomes nearly impossible to use a TM-keyword in a non-infringing way. An AdWords-ad may consist only of a heading (max. 25 signs), two short lines (max. 35 signs each) and an URL (max. 35 signs). How is the advertiser supposed to enable the internet user to determine without difficulty that the advertiser is a third party if it only has such limited space to its disposal? <br />In my opinion, it should be enough to mention the advertiser’s name in the ad text or in the URL beneath. Unfortunately, the Austrian Supreme Court (OGH) is much stricter. It finds the use of the TMs in dispute infringing, although those TMs do not occur in the ad and the name of the advertising company, “trekking.at”, is indicated in the URL. Apparently, the Austrian court finds it relevant that the company name of the advertiser contains a generic term, whereas the TMs/search terms/keywords are highly original. <br />The OGH requires the advertiser to counteract the risk of confusion by a clarifying indication. But how?! I can only think of examples like this one I found last May when searching for the brand “Armani” on Google.de: “Edle Designer Mode – 70 %. Kein Armani, aber viele andere edle Designer-Marken. Bis -70% Rabatt! www.dress-for-less.de”. In English: “No Armani but many other designer-labels”. This is definitely a clarifying indication, but then again: isn’t this blurring or taking unfair advantage of the reputable TM? <br />Furthermore, the Austrian court points out that the use of a TM-keyword is only then not infringing, if the internet user can “easily” recognize that there is no economic connection. The ECJ speaks of enabling the user “only with difficulty” to ascertain whether there is an economic connection. Is “not difficult” exactly the same as “easy”? <br />I think it’s time to find out what consumers really think when viewing the ads. Are they truly initially confused when they type in a TM and are confronted with ads of third companies? Can they possibly assume an ad to originate from (a company economically connected with) the TM-owner when the TM is not even mentioned in the ad? Is the fact that the ad appears after a search for the TM sufficient to conclude that there could be an economic connection, unless such connection is explicitly denied (which, as described above, is an extremely hard task)? Remember that the ECJ wants us to take “the normally informed and reasonably attentive internet user” as a yardstick. I did not perform any official consumer survey (yet) but from some random testing in my family circle, I can reveal that even less than normally informed and reasonably attentive internet users are at least aware of the difference between the search results and the advertisements and are rather skeptical towards the latter. <br />Here I will stop writing since this comment is already much too long. Austrobant, I love your idea about a meeting in Vienna. I’d be willing to help with the organization.Nicole van der Laannoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-34764631985029936112010-11-05T14:32:49.122+00:002010-11-05T14:32:49.122+00:00Thanks for the intriguing discussion above. I too ...Thanks for the intriguing discussion above. I too have great interest in this topic.<br />Mr Justice Arnold is right to state that the ECJ has adopted at least some sort of initial interest confusion doctrine, whether that is a good development or not. <br />I agree with the commentators above that the Court has not given any direct clues about the definition of “vagueness”. However, from a policy perspective, the Court seems to allow the use of TMs as keywords provided the advertiser is identifiable. (It denies an adverse effect on the advertising function, refuses to discuss the other TM functions, and relieves Google from primary liability.) <br />But if - what austrotrabant calls - option “D” is true, it becomes nearly impossible to use a TM-keyword in a non-infringing way. An AdWords-ad may consist only of a heading (max. 25 signs), two short lines (max. 35 signs each) and an URL (max. 35 signs). How is the advertiser supposed to enable the internet user to determine without difficulty that the advertiser is a third party if it only has such limited space to its disposal? <br />In my opinion, it should be enough to mention the advertiser’s name in the ad text or in the URL beneath. Unfortunately, the Austrian Supreme Court (OGH) is much stricter. It finds the use of the TMs in dispute infringing, although those TMs do not occur in the ad and the name of the advertising company, “trekking.at”, is indicated in the URL. Apparently, the Austrian court finds it relevant that the company name of the advertiser contains a generic term, whereas the TMs/search terms/keywords are highly original. <br />The OGH requires the advertiser to counteract the risk of confusion by a clarifying indication. But how?! I can only think of examples like this one I found last May when searching for the brand “Armani” on Google.de: “Edle Designer Mode – 70 %. Kein Armani, aber viele andere edle Designer-Marken. Bis -70% Rabatt! www.dress-for-less.de”. In English: “No Armani but many other designer-labels”. This is definitely a clarifying indication, but then again: isn’t this blurring or taking unfair advantage of the reputable TM? <br />Furthermore, the Austrian court points out that the use of a TM-keyword is only then not infringing, if the internet user can “easily” recognize that there is no economic connection. The ECJ speaks of enabling the user “only with difficulty” to ascertain whether there is an economic connection. Is “not difficult” exactly the same as “easy”? <br />I think it’s time to find out what consumers really think when viewing the ads. Are they truly initially confused when they type in a TM and are confronted with ads of third companies? Can they possibly assume an ad to originate from (a company economically connected with) the TM-owner when the TM is not even mentioned in the ad? Is the fact that the ad appears after a search for the TM sufficient to conclude that there could be an economic connection, unless such connection is explicitly denied (which, as described above, is an extremely hard task)? Remember that the ECJ wants us to take “the normally informed and reasonably attentive internet user” as a yardstick. I did not perform any official consumer survey (yet) but from some random testing in my family circle, I can reveal that even less than normally informed and reasonably attentive internet users are at least aware of the difference between the search results and the advertisements and are rather skeptical towards the latter. <br />Here I will stop writing since this comment is already much too long. Austrobant, I love your idea about a meeting in Vienna. I’d be willing to help with the organization.Nicole van der Laannoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-81062950918887271812010-10-26T14:17:56.587+01:002010-10-26T14:17:56.587+01:00@Birgit Clark
Well, good point! I think we both ...@Birgit Clark <br /><br />Well, good point! I think we both agree but just see the issue from different perspectives. So...<br /><br />I think we all agree that the ECJ ruled that AdWords are per se not infringing but only under certain circumstances, right? <br /><br />So we are left with three scenarios: <br />infringing -> maybe infringing -> not infringing. <br /><br />And I guess the 'vague' issue is all about the dividing line between 'maybe' and 'not' section, right?<br /><br />If we try to image this dividing line as a scale on the one side we have got 'duty for the advertiser to rule out any possible wrong assumptions' (TM-owner friendly) and on the other side 'duty for the advertiser not do to anything that could cause a wrong assumption (advertiser-friendly).<br /><br />And how national courts interpret this remaining discretionary space appears to be the question, right? <br /><br />And... I think we both agree that the ECJ hasn't provided any valuable hints of how to interpret this discretionary space. <br /><br />Anyone disagreeing or able to good offer counter-argument? <br /><br />Sorry for all the rhetorical questions. Any chances the Kats are going hold a meeting in Vienna? I'd love to discuss this issue again in an off-line environment.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-59202714064401527122010-10-23T10:40:27.282+01:002010-10-23T10:40:27.282+01:00@austrotrabant - interesting post, as usual. :-) I...@austrotrabant - interesting post, as usual. :-) I would have thought though, and please do correct me if I get it wrong, that group "D" is a sub-group of "B" or a logical extension of "B". <br /><br />I am not sure you need "dolus eventualis" at all, at least not the way I read Portakabin and Die BergSpechte and even Google France but then again, what is "vague"...?!Birgit Clarkhttps://www.blogger.com/profile/02822674465997696890noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-26579872492611530992010-10-22T19:51:08.318+01:002010-10-22T19:51:08.318+01:00I think I disagree..
Weren't we happy that th...I think I disagree..<br /><br />Weren't we happy that the US courts had finally dumped the IIC? In my opinion (which I think I've adopted from Goldman) it is ill defined as it is very difficult to apply correctly as it is almost impossible to predict whether the average consumers will be confused or not? <br /><br /><br />Summing up the ECJ's recent Keyword Advertising decisions with my own words I come to three conclusions: <br /><br /><b>A:</b> If the third party has done anything to suggest an economic link etc. -> infringement <br /><br /><b>B</b>: If the third party drafted the ad is such a way that the ad itself was (on purpose) so vague that an average consumer could only determine with great difficulty if an economic connection exists or not [let's call it '<b><i>dolus eventualis</i></b>'] -> infringement. <br /><br /><b>C:</b> If the third party hasn't done anything to kind of "provoke" the assumption an any kind of economic connection: -> no infringement.<br /><br /><br />But what the UK court in this case does was to actually invent a fourth criteria: <br /><br /><b>D:</b> the third party has not undertaken every possible steps to effectively rule out any possibility that any user might be assume a connection. <br /><br />If the ECJ had wanted such a solution he'd have said so. But fact is, he didn't. The ECJ went for A and B which logically results in C. <br /><br />I guess D. in this case was the outcome of an 'unfortunate' lawyer. But to be fair, and I think Gareth you be delighted to hear that, the Austrian OGH in BergSpechte II didn't even need the IIC to reach conclusion D. <br /><br />I am confident that the ECJ's strong arm will bring the national courts onto the right track. I think we've see that already seen that in the past a couple of times.. ;)Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-27804824747195877922010-10-22T14:11:48.202+01:002010-10-22T14:11:48.202+01:00Ironically, perhaps, the European position on Init...Ironically, perhaps, the European position on Initial Interest Confusion is now more consistent than the US position, where there is still debate on the applicability of Initial Interest Confusion. Completely agree, though, that the issue is clear as far as the ECJ is concerned.Garethhttp://blawg.intellectual-property.itnoreply@blogger.com