Although shortly after the ECJ’s decision on Google France the media spoke largely about a victory for Google, its now the national courts turn and the picture that is drawn by some Austrian jurists, not only by the attorney of the Austrian claimant, is not that positive for Google and predicts a victory for the claimants.
In its previous decision on Bergspechte (OGH, 20.05.2008, 17 Ob3/08b), the court has ruled under VI, 8 that:
“Es ist daher jedenfalls nicht ausgeschlossen, dass der durchschnittlich informierte, aufmerksame und verständige Internetnutzer die Marke und die Werbung gedanklich miteinander verknüpft. Unter dieser Voraussetzung ist die Verwendung der Marke als Keyword grundsätzlich geeignet, die Herkunftsfunktion der Marke zu beeinträchtigen.“
Rough translation by Austrotrabant: “It thus cannot be excluded that the reasonable [etc.] user establishes a mental link between the trade mark and the ad. Under these circumstances the use of a trade mark appears suitable to impair the function of origin of a trade mark.”
Thus, adding the assumption of the OGH to the formula of the ECJ that trademark rights are infringed..
“in the case where that ad does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.”
Although I am personally of the opinion that an ordinary text-ad, not bearing the TM of the competitor (“Adv-“) does not impair the function of origin of a trademark and thus infringe the TM-owners right in accordance with Art 5 (1) of the Directive 89/104, the court, if it sticks with its slightly technophobic previous ruling, will most likely render a decision which will find that the defendant violated the claimants trademark rights.
If the court decides in this direction, it might be a defeat for both trade mark holder and advertisers at the same time, as the only one profiting from such a judgement would be the attorneys who have already successfully managed to convince the courts to render a decision (Wein&Co) which is – again only in my personal opinion – not only pretty much against common sense, but furthermore also neglects the fact that the internet is a steadily developing phenomenon and that it is difficult to understand how practises which used to be deemed “legal” and which have helped this medium to flourish will soon be ruled unlawful.
My personal comparison is that of people buying cheap land from the government somewhere close to railway tracks and years later suing the government for health damages caused by the noise of trains running by. So who came first, the internet & internet advertising or un-savvy internet users who expect the world to be tailored “fool-proof“?
I am somewhat optimistic and, looking to our German neighbours, whose Supreme Court judgements are missing a certain technophobic attitude, I hope that justice will find its way, in the same way it did in the UK in Arsenal. Furthermore, I am very pleased to see that the ECJ clearly objected the OGH’s assumption that the labelling of the Top-Ads are insufficient and that thus the Top-Ads should be treated as part of the ‘organic’ search results.
And… one should not forget that, if the ECJ had ruled that Keyword Advertising would not infringe TM-rights at all, this blog would be pretty pointless😉