Archive for the 'Keyword Options' Category

BGH: MOST-Pralinen; German Supreme Court remains liberal on Keyword Advertising & contradicts Austrian and French Supreme Courts

20121215_BGH_logo_teaserIn a press release, the German Supreme Court (BGH, 13.12.2012, I ZR 217/10, MOST-Pralinen) stated that the booking of a generic term (“pralinen”) as a keyword on Google AdWords whilst using the “broad match” function, does not constitute a trademark infringement, when users, entering a query (“Most pralinen”) similar to the trademark  of a competitor (“MOST”) as a search term, are shown ads for other companies than the one of the trade mark owner, although (1) the text of the (side-)ad does not explicitly rule out any possible commercial connection between the TM-holder and the competitor and (2) when booking the keyword “pralinen” on Google AdWords the term “MOST Pralinen” was suggested as a “Keyword Idea” by the Google AdWords Keyword Tool.

For a detailed summary of this case please see my previous post and an article by Clark/SchubertJournal of Intellectual Property Law and Practice, 2011, Vol. 9, No. 9, 602.

20121215_Most-Pralinen_AD

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*ECJ: Advocate General’s Opinion on French Keyword Advertising Cases expected 22nd of September

2009/09/22: Please see my NEW post >>here<<, containing  brief summary of the AG’s opinion.

Picture 5As I’ve just read on the Class 46 blog, the ECJ has published on its website the revised the date for the Advocate General’s Opinion in the three French Keyword Advertising Cases Google Inc. v Louis Vuitton Malletier, Google France v Viaticum, Luteciel keyword cases (C-236/08, C-237/08, C-238/08) to Tuesday, 22nd of September 2009

Picture 6

*OLG Braunschweig aligns to BGH’s “pcb” on “Broad Match”

As I’ve already stated earlier the decision of the OLG Braunschweig always used to be very “different” when it came to the issue of broad matching. In a decision issued on the 25th of March 2009 (Az. 2 U 193/08) the OLG now dropped its line of argumentation which had placed a duty onto advertisers, who used AdWord’s “broad match” keyword-option, to check if any of his competitor’s trademark were displayed in the “additional keywords”-section of the Adword’s Keyword Tool(!). If the advertiser could prove that this has not been the case he could only be sued for interim injunction in case he refused to add his competitor’s TM to his list of exclusive keywords.

Following the BGH’s “pcb”-decision the OLG now stated that advertisements triggered by a term similar to the a competitor’s trademark (broad match) does not necessarily constitute a “attribuatable use” of the competitor’s trademark under  § 14 (2) of the German MarkenG.


Links:
Ott, Links and Law [ger]
Dr. Damm & Partner [ger]
Markenserviceblog [ger]

*Examples for bad Ad-placements

I’ve already written quite a lot about Keyword Options and how they can be used to deliver advertisement exactly suiting the target audience’s interests. Still, sometimes such things just work out and quite “unfortunate” placements (many as a result of missing “exclusive Keywords” are the result.

I’ve found two galleries which show such displaced ads: The quality of the pictures is quite “mixed” so keep scrolling… Gallery No. 1 , Gallery No. 2.

*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<<

*Predictability of Broad Matching Results

Assuming that the ECJ will not broadly allow the usage of third party trademarks as keywords (and, as a logical consequence, therefore also not allow the bearing of third party trademarks in the advertiser’s advertisement), both the LG München “POSTERLOUNGE” decision and the BGH’s “PCB”-decision prove inconclusive.

It is, therefore, subject to further discussion how predictable Google’s “Broad Match” and Yahoo!’s “Advanced Match” are in determining whether advertisers who booked generic terms as keywords can reasonably expect to have their (“Adv-“) ads be displayed next to a search result for a similar term which is itself a protected trademark.

1. Placing the burden upon the Providers of Keword Advertising:
Providers of Keyword Advertising give only vague clues to the range of their broad match functions, but fail to present detailed information and rules about them. An option that has many be called for my French courts [citation will be added soon] is to inform advertisers about possible “concurrences” between their desired keywords and protected trademarks.

2. Sharing of the burden between Adwords and the advertiser:
Following a recent French judgement Google Adword’s should have to offer links within its system to enable advertisers to check whether their desired keywords are similar or identical to any know/ registered protected French sign.

(the author attempted to test this function a month ago for Adwords being displayed in France but did not find any links guiding to any trademark databases)

Still, following this system Google has placed the burden onto the advertiser again and as for the broad match it will just be impossible for the advertiser to check out any possible combination/variation Adwords might find appropriate for its chosen keyword, given that most search engines for trademarks are in fact very slow and the use is truly cumbersome.

Following this an automated check by Google or the advertiser for a similarity between keywords and protected signs will in the opinion of the author effectively only be possible after the establishment of a single or a small network of highly efficient databanks, allowing to check in real time.

3. Use of automated Fingerprint Technology:
“Fingerprint technology” is a filtering technology actively and effectively used (e.g. by Google) to identify copyrights infringements on the internet. Using this technology not only copies of complete works can be found on the internet but also parts or segments of the copyright protected work. (For more information on this topic please consult the Website of “Ina” and take a look at their highly informative brochure on fingerprint technology) The suggestion of the author is to require the proprietors of protected signs to sign up to a fingerprint-database (so to speak a black list) which could then search the anomised Google Adword’s keyword database and disable infringing keywords before they ever get used to trigger advertisement.

Still this idea has got a significant downside: Such technology, as any filtering technology would then as a logical consequence also hinder freedom of speech, descriptive use etc. [Angelopoulos, Filtering the Internet for Copyrighted Content in Europe, IRIS plus, 2009-4]

4. Leaving the Burden with the Advertisers
At the same time, it seems highly unpractical for advertisers to include all -fairly similar- trademark protected terms in their list of “exclusive keywords”.

A fact that also should be mentioned at this point that users of search engines tend to make e.g. an incredibly high number of spelling mistakes. Search engines know that and have developed technologies to still deliver the results the users where originally searching for. (this fact is one of the main justification for the Broad Match technology) Should advertisers as a consequence also be banned from booking keywords in which protected signs where spelled wrongly, but which clearly indicate that users where searching for e.g. a trademark?

*Posterlounge Case

1. OVERVIEW & COMPARISON TO PREVIOUS CASES:
The decision at hand [LG München, 10.04.2008, 1 HK O 5500/08POSTERLOUNGE] is quite similar to the “Mr Spicy” judgement [Victor Andrew Wilson v. Yahoo! UK Ltd. / Overture Services Ltd. (2008)] issued in the UK last February and the “PCB-Pool” decision of the German Supreme Court [BGH, 22.01.2009, I ZR 139/07 PCB].

In the Mr. Spicy case, the holder of the Community trademark “Mr. Spicy” sued Yahoo! for trademark infringement, as Yahoo! showed advertisements for an competitor, which got triggered by users entering the search term „spicy“. In fact, the competitor had booked the keyword “spicy” using Yahoo!’s “Advanced Match”-option (may be compared to Google Adword’s “Broad Match” -option). The High Court then found that the trademark “in this case [was] not used by anyone other than the browser who enters the phrase “Mr Spicy” as a search query in the defendants’ search engine”. Thus, Yahoo! was not found liable.

For more information please refer to Dr. Ott’s links&law webpage , which offers a very good overview over any recent internet law cases.

Presumably as a consequence of this decision, Google Adwords added Great Britain and Ireland on the 5 April 2008 to their list of countries with a weakened trademark-protection.

In the PCB-Pool decision of the BGH the facts where similar, as the defendant booked a term which is widely known as an abbreviation for a technical process (“pcb” standing for “printed circuit board“), using the Google Adword’s “Broad Match“-option. This led to the display of the defendant’s advertisement when entering the trademark of the claimant (“PCB Pool”). The claimant’s advertisement did not bear the trademark of the claimant (“Adv-“).

The BGH found, similar to the UK High Court, that neither the defendant nor Google had “used” [“Verwendung” in the original German, which implies use in the broad sense of the word] the claimant’s trademark. Instead, they had only used the generic term “pcb“. Thus, the question of whether the defendant’s use [“markenmaessige Nutzung“, meaning use in the narrow sense] violated the claimant’s trademark rights wasn’t examined at all. Furthermore, the BGH pointed out that the trademark of the claimant was very “weak” and that the use of the trademark by the defendant might have been privileged anyway in light of § 23 (2) MarkenG (descriptive use).

2. FACTS OF THE CASE:
In the decision at hand the court declined a preliminary injunction against a competitor of the trademark owner who had booked two (generic) words, which combined together in the right order resulted in the claimant’s trademark. The defendants used the “broad match” option and thus the adverts, which did not bear the protected sign (Adv-), where shown as a Side-Ad when users entered the protected term as a search query into Google. After being informed by the claimant, the defendant instantly added the trademark of the claimant to its list of “exclusive Keywords”.

2.1. DECISION:
The court found that the defendants had not booked the protected sign as a keyword to trigger the advertisement and thus had not used the trademark (“keine Nutzung” = no use in the narrow meaning), but instead booked two generic terms which lead, because of the broad match option, to the display of the competitor’s ads.

-Confusion-
The court further assumed that the trademark [“POSTERLOUNGE”] was not likely to be confused with the term [“lounge poster”] used by the defendants and that the trademark’s distinctiveness was very weak.

Furthermore, the court reasoned that the use by the defendant might have been privileged anyway by § 23 (2) MarkenG (descriptive use).

-Trick-
What is interesting to note is that the court expressly stated that the protection of such weak trademarks, which mainly consist of generic terms, might lead to the unwanted result of achieving protection through the “trick”(!) of just rearranging the order of generic terms. The court gave the example of “Kaufhaus” (this is a German word, consisting out of the two German words for “Kauf” = buying and “Haus”=house) and “(descriptive use) Haus-Kauf”.

-No indirect infringement-
The court also found that no indirect infringement (Störerhaftung; 1004 BGB) had take place and that the actions of the defendant did not amount to acts deemed to be unfair competition.

-No contradiction to earlier cases-
The court ended by stating that this ruling does not contradict previous judgements on similar matters (Kammer für Handelssachen LG München 9 HK O 5193/08, 17 HK O 4413/ OLG München 08, 29 U 4013/07), as the OLG judgement dealt with a case of almost identical signs and thus a high level of possible confusion, while the other two LG decisions were not based on such detailed (technical) explanations.

3.SUMMARY:
Summing up all the decisions discussed, it seems that courts have finally started to pay attention to the technical background of advertising in an online environment and therefore start to take into account technological and factual matters when applying trademark law to Keyword Advertising cases.


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