*ECJ on C-97/09 Eis.de [a.k.a. Bananabay]: Google France & Bergspechte Recycled!

The ECJ today published its decision in the form of a “reasoned order” (Art 104 (3) of the Rules of Procedure of the Court of Justice allows it under certain circumstances to do so) on the case of Eis.de (formerly known as ‘Bananabay’). As the IPKats have already reported, the decision unfortunately does not contain any news which could be used to answer the many questions left unanswered by the ECJ’s previous decisions.


The court however ruled that: “Article 5 (1) a of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with or similar to that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising 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 by an undertaking which is economically connected to it or, on the contrary, originate from a third party.


So, taking into account that the BGH in its Bananabay decision [BGH I ZR 125/07, par 19] has already stated that …it would be “rather far fetched” to assume that users would establish a connection between the search term entered and the ad displayed … or to assume, on the basis of the ad, an indication about the origin of the advertised goods or services… I do expect the BGH to rule that ads not containing the TM will not adversely affect the function of indicating origin.


But as for the other two decisions it is for the national courts to decide so we are left to see how these courts effectively will decide. I personally expect the Austrian OGH in Bergspechte [OGH 17 Ob 3/08b, par VI 10.] to be the first court to decide and I am very much looking forward to see how the court will react to a: the ECJ’s bold rejection concerning the OGH’s questionable idea that Google displays ads inside the ‘organic’ search results [sic!] and b: the fact that the ECJ stipulates that even in the case of lit. a (identical sign/identical goods & service) the function of indicating origin has to be adversely affected. As the OGH has already mentioned in its previous decision (speaking however about lit. b, similar sign/similar goods & services) that clearly labelled ads would not lead to such an impairment of the function of indicating origin, it will be interesting to see if the court will transfer this reasoning from lit. b also onto lit a., or if it will find a loophole trough the fact that the protection granted  by lit. a shall be more extensive than the one by lit. b

the Registry of the Court of Justice  is at the same time reportedly still trying to kind of convince Mr Justice Arnold of the Chancery Division (England and Wales) dispute to restrict his “mammoth list of no fewer than ten questions“, I do not expect the ECJ’s decision on the Interflora case any time soon.

1 Response to “*ECJ on C-97/09 Eis.de [a.k.a. Bananabay]: Google France & Bergspechte Recycled!”

  1. 1 Birgit 12/05/2010 at 17:00

    While BergSpechte was the forgotten AdWord case, Eis.de is the recycled AdWord case…. 🙂

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