More than half a year after the ECJ published its decisions in Google France a number of questions still remain. While some questions might be answered by the Interflora reference (e.g. Art 5 (2) TMD), others will most probably remain open.
One question that will for sure remain is HOW an ad must be drafted so as not to have an adverse effect on the function of indicating origin. The ECJ ruled that ads must not be misleading or vague to such an extent that users might – incorrectly- assume a non-existing financial connection between the advertiser and the trademark used as a keyword to trigger the ad.
On the other hand, the court also expressed that Keyword Advertising per se does not have an adverse effect on the function of indicating origin. This means that Keyword Advertising in general has to be admissible and thus not infringing.
But where to draw the line? To me it seems that the border between ‘vague‘ and ‘not infringing‘ is a difficult one and that the courts need to have the discretionary powers to decide upon it. When doing so, the courts may opt for either a TM-owner-friendly approach, a neutral position, or for an advertiser-friendly approach.Some readers might recall in this respect my fierce criticism of the BergSpechte II decision of the Austrian Supreme Court of Justice which followed a very TM-owner-friendly interpretation of the ECJ’s ruling (German-speaking readers can read a comment on this case by Dr. Ott and myself in the MMR 2010, 745).
The ratio of the Austrian decision – concerning an ad which did not contain the TM of the claimant – is that the advertiser had not done enough to rule out any chance of confusion. The Austrian court stated that the defendant had failed to rule out any likelihood of confusion by adding ‘appropriate clarifying indications‘. Furthermore the court found that the generic and not-original (Display-) URL (http://www.trekking.at) used made it ‘appear more likely’ that internet users would assume a connection between the advertiser and the TM-owner.
Following the ratio of the court’s second argument, users of generic domains (books.com, cars.com, etc.) are strongly advised not to book Austrian trademarks as keywords for their ads as the display of their URL in the ad would not be sufficient to rule out any chance of users being mistaken as to a possible financial connection between the advertiser and the TM-owner.
Even more interesting is of course the court’s first argument, with which it demanded that the advertiser add ‘appropriate clarifying indications‘. Isn’t that all already a bit far-fetched?
How many of the 95 characters of a text ad should be devoted to ruling out any possible misunderstandings? Shouldn’t it be enough to demand that the advertisers don’t do anything to actively provoke confusion?
I’d like to encourage all readers who believe that 95 characters are enough space to get your commercial message across AND to add a appropriate clarifying indications to sign up for a AdWords account and to try yourself. Furthermore, I am convinced that it is hard to come up with any ad text that will not leave room for wrong assumptions; HE will for sure misunderstand it 😉
However, unfortunately the High Court for England and Whales has also issued a decision in which it also followed a very TM-owner friendly interpretation.
At this point I’d like to thank the IPKats team and especially Birgit Clark who not only gave me the chance to discuss this question on their blog, but also published the ‘graphical summary‘ of our discussion on their blog (please see below).