*ECJ’s Decision on C‑558/08 Portakabin v Primakabin

Special thanks to Neefs who reported about the ECJ’s most recent decision in the field of keyword advertising on Twitter.

I haven’t had time to read the whole piece so here are just a few things that have struck me:

a: The court also, once again explicitly ruled that all the ads were shown outside of the (organic) search results. (par 37) Thus the ECJ sees the AdWords to be advertisement which is shown besides the (organic) search results. Once again the court did not indicate that users could mistake the ads as being part of the search results.

b: Regard the issue of display of the infringed trademark in the text of the ad (in the context of reselling) the court found:

“43 It follows that no purpose is served by examining whether the goods or services referred to by the ad are actually offered for sale in the wording of that ad, as set out by the reference service provider, or whether they are offered for sale only on the advertiser’s website to which the internet user is referred if he clicks on the advertising link. [this paragraph however refers to the question whether there is a  use “for” goods and services]

44 It is, in principle, also unnecessary to carry out such an examination when considering the question whether the use of the sign – identical with the mark – as a keyword is likely to have an adverse effect on the functions of the mark and, in particular, on the function of indicating its origin. As was pointed out in paragraphs 34 to 36 above, it is for the national court to assess, in the light of how the ad is presented as a whole, whether it enables normally informed and reasonably attentive internet users to determine if the advertiser is a third party vis-à-vis the trade mark proprietor or, on the contrary, economically linked to that proprietor. The presence or absence, in the ad, of actual offers for the sale of the goods or services in question is not, in general, a decisive factor for purposes of that assessment.”

So in case I understood the ECJ correctly, it doesn’t make any difference whether the trademark is shown in the text of the ad or not? Could that mean that the court assesses this question purely on theoretical level without analysing the facts of the relevant case? This would be kind of surprising as the GA in in his opinion argued that people only judge the ads based on the ad itself plus the website it is linking to.

Ott argues in this respect that the paragraph has to be interpreted meaning that the court “in principle” does not assess the question on the basis of the text of the ad but instead “in principle” only on the basis of the content of the linked website. Ott‘s interpretation indeed makes sense, taking into consideration that the number of characters in AdWords are strictly limited and thus can only communicate a very limited amount of information.

c: In par 50, 51, 52 the court again sets out that the requirements for “likelihood of confusion” and an “impairment of the function of indicating origin“, which is at the same time the “essential trademark function”  are the same.

d: Concerning the descriptive use protection granted by Art 6 of the TMD:

“60 In that regard, it should be noted, as the Commission of the European Communities has observed, that, in general, use of a sign identical with, or similar to, another person’s trade mark as a keyword for an internet referencing service is not intended to provide an indication of one of the characteristics of the goods or services offered by the third party in that use, with the result that that use does not come within Article 6(1)(b) of Directive 89/104.

61 In special circumstances, which must be assessed by the national court, a contrary finding may, however, be necessary. …”

Means to my understanding that advertiser can not “escape” possible liability through by claiming that their use of the third party trademark was merely descriptive.

e: With regard to resellers the court found surprisingly clear words:

“92 In the light of all of the foregoing, the reply to the third question is that Article 7 of Directive 89/104 must be interpreted as meaning that a trade mark proprietor is not entitled to prohibit an advertiser from advertising […] the resale of goods manufactured and placed on the market in the EEA by that proprietor or with his consent, unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark.”

Resellers are obviously well off, even when they remove (on only some products) the original label (de-branding).

Summarizing the novelties from this decision: “descriptive use” is not a valid defence, resellers are generally quite well off.