*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.

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

In 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/Schubert, Journal of Intellectual Property Law and Practice, 2011, Vol. 9, No. 9, 602.

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

Google 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.”

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.

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

Ott (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.”

*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

*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]:

*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, Search Engines Searching for Trouble? – Comparing Search Engine Operator Responsibility for Competitive Keyword Advertising Under EU and US Trademark Law, July 2011.

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.

*’Paid Inclusion’ / ‘Keyword Buying’ – A Dangerous Road To Go For Microsoft

Microsoft’s search engine Bing.com is obviously currently testing a new layout which includes advertisements among its search results while insufficiency labelling them as advertising. This practise is known as ‘paid inclusion’ or ‘keyword buying’ on could prove as a dangerous road to go for Microsoft.

Yahoo! has already tried to go this way in 2009 but soon again ended its paid inclusion program after intensive controversy on this issue.

*BGH: Clear Win For Google AdWords in German Eis.de / Bananabay II Case

The German Federal High Court on Civil matter (BGH) ruled in early January that the booking of a sign identical to a trademark to trigger ads for similar products or services does not infringe TM law as long as the text of the ad does not contain the TM and the Display-URL points to a third-party website.

Today the full text of the decision got published (BGH, 13.01. 2011, Az.: I ZR 125/07).

The court not only ruled on the trademark aspects but also used the occasion to state expressively that AdWords and “MetaTags” have to be treated differently and that Keyword Advertising does notconstitute an act of unfair competition.

The decision  constitutes a significant victory for Google AdWords and its customers in Germany. Although the author does not fully understand what the court was trying to say in para 27, the decision is of surprisingly clear and also brings long-desired clarity to other legal questions related to keyword advertising.

As the author is painstakingly trying to finish a paper on L’Oreal on time here are just a few highlights:

*Instant Preview Now Enabled -Almost- By Default

Most users will have noticed that Google’s search engine results page recently received a decent overhaul. One of the many things that has changed is the Instant Preview Function. This function allows users t ‘preview’ the website of a search result or an linked-to ad. Preview has been available for search results (‘Google Preview‘) since October 2010 and for ads (‘Instant Preview for Ads‘) since April 2011.