As Jeremy has just reported on class 46 , the Danish Supreme Court has issued a decision on the 31st of October 2009, stating that it was unclear whether the registration of a trade mark ["SKODA"] by a third party so as to trigger (keyword) ads could be seen as “commercial use” in the meaning of Art 6 TM Directive. As a consequence, the court found that it was not shown to be likely that the third party infringed the proprietor’s TM. For a detailed analysis please see below.
“For the benefit of the trademark and internet communities” MAQS Copenhagen office was so kind to provide an unofficial English translation of this decision >>here<<. The original Danish document can be found >>here<<.
It is, however, interesting to note that the defendant (HE-House A/S and HE-Cars) has used a similar sounding arguments as the General Advocate in his Google France opinion did, speaking about a “silent conversation” between the advertiser and the search engine and pointing out that the TM was just used to ascertain that “the search engine knows in what context the advertisement must appear“. Furthermore the defendant pointed out that even if the court would find an (infringing) use such a use would be justified as the use was “necessary, fair and consistent with ordinary business practise” as the ads so not establish the “impression that there is a commercial context” between the plaintiff and the defendant’s TM and refers in this respect to the ECJ’s BMW Case (C-63/97). As a last argument the defendant the interpretation of the ECJ’s Gillette Case (C-228/03) about the criteria of necessity.
The plaintiff of course disagrees as it sees no “silent use” but a commercial use by the advertiser and point out that “advertisement on the internet represents a more agressive and direct form of advertising than advertising in print media” and goes on to argue that users do establish a connection between its TM and the defendant’s ads as “the entered, searched trade mark appears on the results page, and the trademark is thus seen in the context of the triggered advertising“. Concerning the use being “necessary, fair and consistent with ordinary business practise” the plaintiff argues that this is not the case because of the former long-working relationship between the defendant and the plaintiff. The plaintiff also brought forward the truly shaky argument that the case at hand can not not compared to the ECJ’s BMW decision as “the BMW case concerned the use of trademarks in print media” and that this “could not be compared with the use in electronic media, where there is a completely different use and exposure of third-party trademarks“. The plaintiff closes by explaining that the criteria of necessity, as applied in the Gillette case has to be interpreted restrictively.
The Supreme Court started by affirming the High Court that the use of green colour by the defendant (please see picture above) is not necessary to inform users that the defendant repairs and services SKODA cars. Furthermore 4 out of 5 judges (one judge dissents) of the the Danish Supreme Court state that:
“We hold that these questions of interpretation of the [...] Trade- marks Directive Article 5 and Article 6. 1, paragraph c [...] gives cause to such a doubt that it cannot be considered made likely that HE-House has infringed [the plaintiff's] trademarks by letting them be registered as keywords.”
Please see below a short (graphical) summary of the GA’s opinion on Google France. The highlighted and below enlarged proportion deals with the argument of “no commercial use” as brought forwards by the GA and the defendant in the case at hand.
For more information on the GA’s opinion please refer to my previous post or check out also my other graphics on the upper right corner of this blog.
UPDATE: Link to the English translation of the decision got updated 13/11/2011.