BGH: MOST-Pralinen; German Supreme Court remains liberal on Keyword Advertising & contradicts Austrian and French Supreme Courts

20121215_BGH_logo_teaserIn a press release, the German Supreme Court (BGH, 13.12.2012, I ZR 217/10, MOST-Pralinen) stated that the booking of a generic term (“pralinen”) as a keyword on Google AdWords whilst using the “broad match” function, does not constitute a trademark infringement, when users, entering a query (“Most pralinen”) similar to the trademark  of a competitor (“MOST”) as a search term, are shown ads for other companies than the one of the trade mark owner, although (1) the text of the (side-)ad does not explicitly rule out any possible commercial connection between the TM-holder and the competitor and (2) when booking the keyword “pralinen” on Google AdWords the term “MOST Pralinen” was suggested as a “Keyword Idea” by the Google AdWords Keyword Tool.

For a detailed summary of this case please see my previous post and an article by Clark/SchubertJournal of Intellectual Property Law and Practice, 2011, Vol. 9, No. 9, 602.

20121215_Most-Pralinen_AD

Continue reading ‘BGH: MOST-Pralinen; German Supreme Court remains liberal on Keyword Advertising & contradicts Austrian and French Supreme Courts’

“Ads related to …” text field will make it harder of plaintiffs to claim consumer confusion on Google’s SERP

20121215_Ads_related_to_teaserGoogle Top- and Bottom ads now contain a small text field “Ads related to” followed by the search term entered in bold letters.

As Search Engine Land reports, the intent, says a Google spokesperson, is to give users more information: “As part of our ongoing efforts to show ads that are relevant and informative, we are including more information about why users are seeing certain search ads.” Pamela Parker however assumes that the driving force behind this effort at transparency is also meant to spur click-through rates — and has likely done so in extensive testing. Perhaps users are more likely to click when they understand better why they’re getting the ads they’re getting.

20121215_Google_SERP_marked

This change obviously took place at some point during May 2012, so it will not affect ongoing litigation before European courts (UK: Interflora, GER: Most Pralinen) , but it will make it for sure harder for plaintiffs to claim consumer confusion.

What is interesting to note is that Bing.com has not yet added such a text field.

20121215_Bing_SERP_marked

*Empirical Research on Consumers’ Perspective of Keyword Advertising (II)

20121105_USF_teaserOtt (Links&Law) was so kind to point out a recent study by Franklyn/Hyman on consumer expectations and confusion when using trademarks as search terms.

As a starting point the study correctly states that “there has been little independent empirical work on consumer goals and expectations when they use trademarks as search terms; on whether consumers are actually confused by search results; and on which entities are buying trademarks as keywords. Instead, judges have relied heavily on their own intuitions, based on little more than armchair empiricism, to resolve such matters.Continue reading ‘*Empirical Research on Consumers’ Perspective of Keyword Advertising (II)’

*ECJ Wintersteiger C-523/10: A Forum Shopping (Winter) Wonderland?

On February 16th Advocate General Pedro Cruz Villalón has published his opinion on C-523/10 Wintersteiger, a case concerning a jurisdictional matters referred by the Austria Supreme Court [OGH, 5.10.2010 17 OB 8/10s, Wintersteiger].

Just about two month later, on the 19 of April 2012, the ECJ issued its  decision on this reference for a preliminary ruling.

The court found that Google AdWords TM-disputes “may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser”.

What makes the case so delicate is that Austria (place in which the TM is registered) is, in regard to Keyword Advertising cases, the most right holder friendly court in the EU [OGH, 21.06.2010, 17 Ob 3/10f, BergSpechte III], while Germany (member state of the establishment of the advertiser) is fairly liberal on this matter [BGH, 13.01. 2011, Az.: I ZR 125/07, Eis.de].

We are left to see how this decision will increase legal certainty for right holders, online advertisers and of course Google itself.

I’ve updated by little chart as well:

For a deeper analysis: IPKAT: Freedom, security and justice — or skiing with AdWords Continue reading ‘*ECJ Wintersteiger C-523/10: A Forum Shopping (Winter) Wonderland?’

*Finally! Doctoral Studies Completed!

Dear Readers, apart from all the people who supported me during my studies in the ‘brick and mortar world‘, I’d like to especially thank YOU for following my website.

When I started doing my research in 2007 the question of the legality of keyword advertising appeared in Austria to be very straight forward. The Austrian Supreme Court (OGH) in Wein&Co (OGH, 20.03.2007, 17Ob 1/07g) had ruled, without going into much detail, that the booking of a competitor’s trademark  as a keyword on Google AdWords constituted per se an infringement trademark law as well as an unfair practise of competition.

It took until early 2010 before the disputable view of the Austrian court got turned over by the ECJ preliminary ruling inC-278/08 BergSpechte. The Austrian court consequently had to follow the ECJ’s guidance, but still remains, using the room of interpretation left by the ECJ,  to be one of the most conservative (right-holder friendly) courts in Europe in this respect. Continue reading ‘*Finally! Doctoral Studies Completed!’

*ECJ Decision in C-323/09 INTERFLORA – ‘Same, Same But A Different Trademark Function’

The INTERFLORA case is based on a (seriously lengthy) reference containing 10 questions by the England and Whales High Court (EWHC) dated to May 2009. In the light of the ECJ’s Google France decisions in March 2009 the EWHC upon request by ECJ later reduced the number of questions in its reference down to 5 in mid-2010. AG Jääskinen published his opinion  in early March 2011 and the final decision by the ECJ swiftly followed  six month later.

The disputes itself concern the display of an ad by Marks and Spencer which looked like this [para 20]:

Continue reading ‘*ECJ Decision in C-323/09 INTERFLORA – ‘Same, Same But A Different Trademark Function’’

*Literature Review: Keyword Advertising in the US, France and Turkey

Many great articles have been published on the topic of keyword advertising during the last couple of months, three of which are especially recommended for the readers of this blog:

  • Bednarz, Keyword Advertising Before The French Supreme Court and Beyond – Calm At Least After Turbulent Times for Google and Its Advertising Clients, IIC  2011, 641.

Bednarz in detail analyses recent French decisions in the light of the ECJ’s Google France decision and reaches the conclusion that, although the French courts were well-known for not missing a chance to find Google or its advertisers guilty on whatever legal matter (trademark law, law of unfair competition, tort law) was presented to them, this apparently has changed.

Kulk (Delft University of Technology; University of Amsterdam – Institute for Information Law) reaches across the Atlantic and not only provides a splendid and short introduction into the topic, but also compares in detail the principles which the courts on both sides of the atlantic are following. While jurists from the US show little sympathy for the almost Prussian fixation of the ECJ on the requirements of trademark use, jurists from the Old World shake their heads in disbelief over the only legal concept that appears to be even more vague than the ECJ’s concept of the trademark function: the initial interest confusion.

  • Bozbel, Benutzung der Marke als Domain-Name, Metatag and Keyword im Türkischen Recht, MarkenR 2011, 145.

While the US and European legal systems mainly left it to their courts to deal with the topic of keyword advertising, Turkey has opted for the Utha appraoch, explicitly forbidding the booking of a third party trademark as a keyword (149). Bozbel in his article however does not only cover the topic of keyword advertising, but provides a short and concise introduction into Turkish trademark law and its views regarding, domain names, Meta Tags (*sigh*) and keyword advertising.

For further articles published in which the author had a chance to participate or which he wrote – mainly ;-) – on his own, please check the publications tab.


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