More on keywords... and a clarification

The European Court of Justice (ECJ) has now published the official translation of the question the German Federal Supreme Court (Bundesgerichtshof) recently referred to the ECJ in the keyword case "bananabay" (BGH I ZR 125/07), now called " GmbH v BBY Vertriebsgesellschaft mbH" (Case C-91/09). The question is set out below. IPKat readers may recall the IPKat's earlier translation attempt which can be accessed here if you are linguistically inclined and/or would like to compare whether the Kat got it right.

"Is there use for the purposes of Article 5(1)(a) of Directive 89/104/EEC where a third party provides as a keyword to a search engine operator a sign which is identical with a trade mark, without the consent of the proprietor of that trade mark, so that, on inputting the sign identical with the trade mark as a search term into the search engine, an electronic promotional link to the third party's website advertising identical goods or services appears in an advertising block set apart from the list of search results, that link is marked as a sponsored link and the advertisement itself does not comprise the sign nor contain any reference to the trade mark proprietor or to the products it is offering for sale?"

This Kat would like to take this opportunity to stress that the Bundesgerichtshof did not refer the following question to the ECJ, as erroneously reported by several commentators recently. (Please also see the IPKat's post here which includes the IPKat's original prediction what the Bundesgerichtshof's question might be based on the court's advance press release.) While this Kat is rather flattered that her Adword question made it into so many articles, she feels that this point needed to be clarified:

"Does the use of a third party's trade mark as a keyword/Adword on identical goods/services constitute trade mark infringement under the Directive?"

More on keywords... and a clarification More on keywords... and a clarification Reviewed by Birgit Clark on Friday, May 15, 2009 Rating: 5


  1. "Tackling keywords" in the April issue of Trademark World anyone?

  2. I just read the Trademark World article. Weird that they copied the question from the IPKAT without giving the blog any credit.

  3. Hi Cats, I am asking for your help...

    I was reading through the English Version of the Primakabin Ref for Prelim and there is says that:

    "...a reference to the advertiser's website appears either [1]in the list of web-pages found or [2]as an advertisement on the right-hand side of the page showing the results of the search, under the heading "Sponsored Links" which is..."

    -> The Dutch court assumes that we've got a case of Keyword Buying here as the advertisements are not marked as such an mixed with the search results.

    STILL, the German version speaks about three parts [1] a "Verweis auf die Webseite des Anzeigenkungen (a link to the advertisers website), OR [2] "eine Liste mit gefundenen Seiten" (list of search results), OR "oder auch eine Anzeige rechts..." (or an advertisement on the right side under the ....)

    So in my understanding the German version sees three(!) different parts which are separated in the text trough three "OR", while the Dutch version sees just two options, separated by two "OR".

    So, does anyone here speak Dutch so that we can find out if the Dutch Court sees the (Top-) ads as part of the list of (organic) search results.

    I would really appreciate your help!

    Links to the all documents can be found on my blog in the "Legal-Links" Tab ...

    ... and I'd like to point out that I strongly oppose the practise of shooting cats or dogs into space! ;)


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