*Ref. prelim. ruling – Portakabin v. Primakabin

One thing that has to mentioned at the very start is that the German and English version of this reference differ in at least one crucial point (difference between Search Results+Top-Ads and Keyword-Buying) which might be the result of a translation mistake.

Furthermore it was confusing that the court did not only make  a clear distinction between Side-Ads, Top-Ads and the Search Results but also didn’t really address the question if the advertisements (displayed on the Search Engine Results Page: SERP), the court refers to them as “references to the advertiser’s website” contained the trade mark (Adv+ / Adv-) or not. As the court most probably refers to the function “Broad Matching” in paragraph [4] I assume that the rest of the reference therefore does not take the possible influence of “Keyword Options” (e.g. “Exact Match”, “Phrase Match”, Exclusive Keywords”) into account.

SUMMARY:

The Hoghe Raad addressed the question if Keyword Advertising (KWA) should be considered as “use” (German: “Nutzung“) of an registered trademark under Article 5(1) (a) of the Trademark Directive [1. a)]. The court asked further if a difference should be made between Keyword Advertising and Keyword Buying [1.b)] and if it makes a difference if goods & services are already offered in the advertisement displayed on the  SERP or only on the linked, thus subsequent, website (Landing Page) of the advertiser [1.c)].

[2] Assuming the ECJ defines KWA as “use“, in how far does Art 6. (b,c) [descriptive use] preclude the proprietor of the trademark (TM) from prohibiting others to use his TM as a keyword?

[3] Assmuing that the ECJ defines KWA as “use” how far is Article 7. applicable where an offer by the advertiser relates to goods which have been marketed in the European Community under the proprietor’s TM or with his permission?

[4] Is a bit complicated as here the court raises the issue of Broad Matching (“keywords deliberately reproduced with minor spelling mistakes“) as it asks if the answer to [1] would stay the same if the keyword used the Broad Match option but the trademark later on gets displayed correctly on the landing page of the advertiser (which is not the same as the Ad shown on the SERP).

[5] Asks, assuming that the ECJ does not find KWA to be “use“, member states can anyway grant protection to their national TMs under Art. 5. (5).

Case C-558/08: Reference for a preliminary ruling from the Hoge Raad der Nederlanden lodged on 17 December 2008 — Portakabin Limited and Portakabin BV v Primakabin BV >>EN<<, >>DE<<

3 Responses to “*Ref. prelim. ruling – Portakabin v. Primakabin”


  1. 1 Tobias Bednarz 17/05/2009 at 19:22

    Hi Max!

    I would not necessarily say that the court in question 4 talkes about broad match. It talks about variations of the trade mark which are submitted to the search engine by the advertiser. This seems to me as if the advertiser would actually book each variation as an adword rather then just choosing “broad match”. But then again, would that really matter…

    But we also need to be careful how we define the ‘typical’ broad match case. To me that’s a case where an advertiser chooses a merely descriptive keyword which is also contained in a trade mark. Due to the broad match option, the ad is displayed if the keyword is typed in. So the question here is whether the keyword has been used.

    But the situation described by the Hooge Raad in my view would simply lead out of the scope of application of art 5(1)(a) as the sign used is no longer identical to the trade mark.

    But what do you make of the fifth question and the interplay of art 5(1) and 5(5)? Any thoughts?

    Tobias

  2. 2 austrotrabant 18/05/2009 at 15:13

    Hi Tobi!

    Yes, I think I can see your point but I think a list of „misspelled“ trade marks would never be as effective as the „broad matching“-function whose idea it is also to cover exactly such cases. (By the way: 8-11% of all search queries are spelled incorrectly.)

    Well, very good question and I do think that the BGH in its „PCB-Pool“ judgement maybe went a bit too far in this respect as it ruled that booking a generic term, even if this leads to ads being displayed when users search for a (similarly spelled) trademark.

    The courts may -assuming that Keyword Advertising (Adv-) will not be allowed by the ECJ anyway- try to evaluate if the advertiser could reasonable have foreseen such a (broad matching) case and if he reasonably could have also entered a list of “exclusive keywords”. In my opinion this is not the case as e.g. the search term “car” at Google might trigger an ad for which the keyword “Audi” was booked.

    Imagine there is a program that adds random single letters to the beginning and the end of each word. If now an advertiser, who knows about the program and the way it works, enters “amsun” into the program and the ad is shown under they search term “Samsung”… don’t you think the sign he used was “identical”?

    About your last point, I might refer to the very unsuccessful legislation of the U.S. State of Utha in this respect. No I don’t think that, at least from a practical point of view, it would make any sense to create “island solutions”. I just really hope that the ECJ will issue a ruling that will, if it’s the case, be explicit enough also to stop French from surpassing TM-law using the “civil law track”.

    By the way… in case Charlotte in planning to publish your book in the near future. Google has just seriously liberalized its TM-policy for the US… ☺

    Best!

    -max-

    • 3 Tobias Bednarz 18/05/2009 at 15:56

      Hi Max,

      I agree – the French example clearly shows the limits of European harmonisation. But what I don’t see is how the ECJ could possibly prevent French courts from finding infringement on the part of the search engine under unfair competition or general tort law. The only help might be art 14 E-Commerce Directive. But even here, I does not strike me as obvious that this provision should apply to search engines…

      Best,
      Tobi


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