Posts Tagged 'ECJ'

*ECJ Decision in C-323/09 INTERFLORA – ‘Same, Same But A Different Trademark Function’

The INTERFLORA case is based on a (seriously lengthy) reference containing 10 questions by the England and Whales High Court (EWHC) dated to May 2009. In the light of the ECJ’s Google France decisions in March 2009 the EWHC upon request by ECJ later reduced the number of questions in its reference down to 5 in mid-2010. AG Jääskinen published his opinion  in early March 2011 and the final decision by the ECJ swiftly followed  six month later.

The disputes itself concern the display of an ad by Marks and Spencer which looked like this [para 20]:

Continue reading ‘*ECJ Decision in C-323/09 INTERFLORA – ‘Same, Same But A Different Trademark Function’’

*Two Additional Ideas About Portakabin v Primakabin

This post in an addition/update to my previous post in which I’ve already analysed a few aspects covered in the ECJ’s Primakabin decision.

A: In case para 86 is saying that someone who is using a trademark as keyword but not offering (reselling) any of the TM’s products or services on his website is causing damage to function of indicating origin would that mean that it is GENERALLY not allowed to book third party TM as keywords if you don’t sell the product on your website?

“86 In that regard, where the reseller, without the consent of a trade mark proprietor, removes that trade mark from the goods (‘de-branding’) and replaces it with a label bearing the reseller’s name, with the result that the trade mark of the manufacturer of the goods in question is entirely concealed, the trade mark proprietor is entitled to prevent the reseller from using that mark to advertise that resale. In such a case, damage is caused to the essential function of the trade mark, which is to indicate and guarantee the origin of the goods, and the consumer is prevented from distinguishing the goods originating from the proprietor and those originating from the reseller or other third parties (see, to that effect, Case C‑349/95 Loendersloot [1997] ECR I‑6227, paragraph 24, and Boehringer Ingelheim and Others, paragraphs 14, 32 and 45 to 47).”

B: To my understanding the ECJ has introduced the criteria of  use being “seriously detrimental to the reputation of the mark” in respect to Art 7 (2). (eg para 92 last sentence) I am somehow suspicious about the use of the word “reputation“. Is it possible that such detrimental use is only possible where the trademark actually is a trademark with reputation as mentioned in Art 5 (2)?

*ECJ’s Decision on C‑558/08 Portakabin v Primakabin

Special thanks to Neefs who reported about the ECJ’s most recent decision in the field of keyword advertising on Twitter.

I haven’t had time to read the whole piece so here are just a few things that have struck me:

a: The court also, once again explicitly ruled that all the ads were shown outside of the (organic) search results. (par 37) Thus the ECJ sees the AdWords to be advertisement which is shown besides the (organic) search results. Once again the court did not indicate that users could mistake the ads as being part of the search results.

b: Regard the issue of display of the infringed trademark in the text of the ad (in the context of reselling) the court found:

43 It follows that no purpose is served by examining whether the goods or services referred to by the ad are actually offered for sale in the wording of that ad, as set out by the reference service provider, or whether they are offered for sale only on the advertiser’s website to which the internet user is referred if he clicks on the advertising link. [this paragraph however refers to the question whether there is a  use “for” goods and services]

44 It is, in principle, also unnecessary to carry out such an examination when considering the question whether the use of the sign – identical with the mark – as a keyword is likely to have an adverse effect on the functions of the mark and, in particular, on the function of indicating its origin. As was pointed out in paragraphs 34 to 36 above, it is for the national court to assess, in the light of how the ad is presented as a whole, whether it enables normally informed and reasonably attentive internet users to determine if the advertiser is a third party vis-à-vis the trade mark proprietor or, on the contrary, economically linked to that proprietor. The presence or absence, in the ad, of actual offers for the sale of the goods or services in question is not, in general, a decisive factor for purposes of that assessment.

So in case I understood the ECJ correctly, it doesn’t make any difference whether the trademark is shown in the text of the ad or not? Could that mean that the court assesses this question purely on theoretical level without analysing the facts of the relevant case? This would be kind of surprising as the GA in in his opinion argued that people only judge the ads based on the ad itself plus the website it is linking to.

Ott argues in this respect that the paragraph has to be interpreted meaning that the court “in principle” does not assess the question on the basis of the text of the ad but instead in principleonly on the basis of the content of the linked website. Ott‘s interpretation indeed makes sense, taking into consideration that the number of characters in AdWords are strictly limited and thus can only communicate a very limited amount of information.

c: In par 50, 51, 52 the court again sets out that the requirements for “likelihood of confusion” and an “impairment of the function of indicating origin“, which is at the same time the “essential trademark function”  are the same.

d: Concerning the descriptive use protection granted by Art 6 of the TMD:

“60 In that regard, it should be noted, as the Commission of the European Communities has observed, that, in general, use of a sign identical with, or similar to, another person’s trade mark as a keyword for an internet referencing service is not intended to provide an indication of one of the characteristics of the goods or services offered by the third party in that use, with the result that that use does not come within Article 6(1)(b) of Directive 89/104.

61 In special circumstances, which must be assessed by the national court, a contrary finding may, however, be necessary. …”

Means to my understanding that advertiser can not “escape” possible liability through by claiming that their use of the third party trademark was merely descriptive.

e: With regard to resellers the court found surprisingly clear words:

“92 In the light of all of the foregoing, the reply to the third question is that Article 7 of Directive 89/104 must be interpreted as meaning that a trade mark proprietor is not entitled to prohibit an advertiser from advertising […] the resale of goods manufactured and placed on the market in the EEA by that proprietor or with his consent, unless there is a legitimate reason, within the meaning of Article 7(2), which justifies him opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark.”

Resellers are obviously well off, even when they remove (on only some products) the original label (de-branding).

Summarizing the novelties from this decision: “descriptive use” is not a valid defence, resellers are generally quite well off.

*Claimants Attorney in Austrian Bergspechte Case Optimistic About Victory

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.


Having pondered about the ECJ’s Google France and Berspechte ruling quite some time, it seems to me that the optimism of the claimants attorney is might not be unfounded.


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 😉

*Minor Translational Issue in the German Version of the ECJ’s Google France Decision C-236/08

While working on incorporating the decision into my thesis when I realized that a small mistake had made its way into the German version of the ECJ’s judgement. [For a detailed analysis of the decision please refer to my previous post.]

Paragraphs 96 et seq. are might be crucial for the decision as some authors see a justification/explanation in the subsequent paragraphs for the statement in par. 95 that keyword advertising (in principle) does not infringe the advertising-function.


The second sentence of paragraph 97 reads in the English version as following:

“That display, which is, moreover, free of charge, means that the visibility to internet users of the goods or services of the proprietor of the trade mark is guaranteed, […].”


The same section in the German version reads as following:

Infolge dieser Anzeige, die im Übrigen unentgeltlich ist, ist die Sichtbarkeit der Waren oder Dienstleistungen des Markeninhabers für den Internetnutzer gewährleistet, […].


The word “Anzeige” used as the third word of the German version, actually means “advertisement” in English. The French version again uses the word “affichage“, which –to me limited knowledgealso means “display“.


Thus I assume that the use of the word “Anzeige” (advertisement) was a mistake and that the correct term (in accordance with the English as well as with the authentic French version) should be “Darstellung” (display).


Anyone disagreeing? I am just wondering how many authors will notice 😉

*From Biblical Questions To Delphian Confusion: The ECJ’s Decision On Google France C-236/08

Seek and you shall find“. A legal dispute that began its career on the ECJ’s level with a quote from the new testament (Matthew 7:7) has – for now – found its end in a judgement which is as confusing as a statement of the oracle in Delphi might be. At this critical point the efforts of the IPKat  have to mentioned who not only organized – on very short notice – a (Google AdWords Rapid Response) seminar at Ashurst for over 100 people interested in the issue, but who also provided the audience with an excellent summary of the controversial judgement.

Dr Jeremy Phillips, Michael Edenborough, Dr Birgit Clark, Annsley Merelle Ward (from left to right)


Before digging into the difficult questions I’d like to highlight a few issues I found rather clear:

– The ECJ held that Google cannot (directly) be held liable for selling trademarks as keywords and subsequently displaying ads (triggered by the keyword=trademark).

Advertisers can be held liable on the basis of the content of their ads. The sole fact that they have booked a trademark as a keyword doesn’t amount up to a trademark infringement. National courts however have to decide if the the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

Thus the court has missed its chance to simply say that, except for special circumstances (e.g. acts of unfair competition), ads not bearing the TM should not be seen as violating the TM-holder’s rights and ads that do contain the TM very likely do.

– While painstakingly trying to avoid the word “confusion” the ECJ has thus ruled that also cases of Art 5 (1) lit a (sign identical or similar, goods&services identical or similar), a de facto likeliness of confusion needs to be demonstrated by the TM-owner to forbid third parties the use of their trademark. The way the ECJ did this was to say that the TM-owners rights are violated if the functions of the TM are affected. And causing a ([confusion]) of whether or not the good or service advertised stems from the TM-holder affects the function of origin of a trademark. [49, 79]

– The court also seems to be in favour of the idea of granting Google’s AdWords service the liability exception provided by Art 14 of the eCommerce Directive. However the final decision on the subject of whether Adwords is “purely technical and neutral service” again lies with the national courts.


The whole thing however gets a bit more complicated if one looks at the fact that:

– National courts have to decide whether users are able to ascertain if the goods or services originate from the trademark owner. This doesn’t sound like too difficult a task, but one has to look at the different national perspectives ranging from the ultra conservative French courts to the highly liberal German courts, who would for sure have little doubts to rule that the function of origin is usually not affected by an ad not containing the disputed TM.

– The national positions concerning the liability exception of Art 14 are similar to the question mentioned previously, except for the detail that in this case Austria is actually highly liberal, granting this exception to AdWords already since a Austrian Supreme Court decision in 2004. As the cases referred to the ECJ are however French, Michael Edenborough has put it like this:

You must bear in mind, that the court is in France, the claimant is French, the defendant is American. Where do you think this will lead?

Or in other words, does allowing the (obviously anti-Keyword Advertising) French court to decide on the liability exception mean that the exception was not meant to be granted anyway?


Issues the court definitely did not get right:

-The court seems effectively mistaken in its assumption that the (also protected) advertising function of the TM is not affected as the TM-owners website usually appears (rather high up) inside the search results anyway and thus the TM-owner still has the chance to advertise/communicate/convince potential customers.

This sounds pretty reasonable at first glance, but if you think about it a bit longer you might wonder if one can really assume that a TM-holder can actually be found by users if his/her website is not displayed on the very first page of the search results. In theory one could assume that users might keep searching for the TM-owner, but I think the reality is that most users don’t have a clue about Boolean search operators and due to the Primacy Effect it is illusory to expect users to do little more than using the scrolling wheel of their mouse to scroll down on the first results page.

Does this matter? I believe so, as in the cases at hand all of the claimants were listed on the first page of the search results. Thus, if a national court might have to issue a decision in a case where the TM-owner’s website is not shown (on the first page) in the search results, the (?French?) court might assume that his case is substantially different from the cases upon which the ECJ had to decide and is thus not bound to its ruling.

I do know the last point, which was actually brought up by Dr. Stephan Ott in the course of preparing an article on that topic, might be a highly theoretical one, but… I would certainly not be surprised to see a national court using it to justify its decision.


For more information on the cases please refer to the video stream of the Google AdWords Rapid Presponse Seminar, which was hosted by the IPKats, Eric Glodmann’s blog, Adam Smith’s article on the Blog of the World Trademark Review, a short article on,  a analysis (in German) by Dr. Stephan Ott on his Links&Law website or a short newspaper article (in German too) by Austrotrabant. A more elaborate version of this and Dr. Ott’s post will be published in the next issue of the German law Journal MarkenR; Ott/Schubert, Fremde Marken als Keywörter – Orakelsprüche des EuGH als Antwort auf biblische Fragen, MarkenR 2010, 173 (link hopefully coming soon). 

*ECJ Refuses To Answer Austria’s “Paid Placement”-Question Referred To It In Bergspechte

Ever since working on the topic of keyword advertising (early 2007) I was of the opinion that the OGH’s point of view that Top-ads should be seen as “ads inside the organic results” was mistaken. Today I can’t help but stress the fact that the ECJ didn’t even see a need to answer the respective question in the OGH’s reference in “Bergspechte” (C-278/08).

Further I would like to thank  Noha, Fuchs and Wukoschitz who were the only Austrian authors (to my knowledge) who have always questioned the OGH’s opinion while most other authors have restricted themselves onto (slavishly) repeating the court’s opinion which has obviously always been against common sense. 🙂

*ECJ Decision on Bergspechte Expected for the 25th of March

As the author has just learnt the ECJ will publish on the 25th of March at 09:30, only hours before the Google AdWords Rapid Response Seminar its decision on the Austrian reference “Bergspechte” (C-278/08) which will touch similar questions as todays Google France v Louis Vuitton cases, except for the fact that the Austrian court sees “Top-Ads” (ads above the search results, displayed on a coloured background) to be a part of the (organic) search results (for more details on this issue please click >>here<<) and the question if the advertising-function of famous marks should receive special protection.


*Some Questions To Think About Before Reading The ECJ’s Judegement of Google v. Louis Vuitton

It does feel a bit like Christmas. Although the blogosphere seems to continue hibernating the increase in searches for the upcoming ECJ decision leaves little rooms for doubt that we all are quite excited about the decision expect for around 08:30 Vienna time. From previous publications of the ECJ I know that the press is usually informed first which means that we are deemed to wait until the document will be released at around noon.


If you can’t wait (Impatient You!) feel free to click on this link >>here<< to check the Curia website.


But before we all freak out and try to speed read through the decision, trying to be the first blog indexed by Google to contain a summary of the judgement I’d like you to step back on last time and to think about which questions the upcoming decision might answer.


Do we really think the ECJ will answer all our questions? I don’t think you. There are just too many right now to be decided:

– Shall be see the keyword advertising process as one single process, or will the ECJ follow Maduro’s concept of splitting it into a “booking” (no sale of goods) and a “displaying” (no likeliness of confusion) steps?

– Will the ECJ decide on the liability of Adwords alone or will it decide about “both sides of the coin“.

– Will the court also consider the much litigated “Keyword Suggestion Tool“?

– Will the court eventually come up with something like a duty for Google to check if the term the advertiser is about to book has been registered in the respective target area. If yes, shall Google also check if the Nizza classes of the products and services of the advertiser and the TM-holders are the same. (The second sentence is a joke).

– Will the follow the arguments of the GA concerning the fact that web users do have the capability to differentiate between an ad and the website of the trademark holder or a licensee?

– Will the court eventually consider the display of search results and ads in detail, establishing kind of guidelines concerning the placement etc (or Google’s design change in 2007, changing the background colour or Top-Ads)?

– Will the court also try to close all the litigation loopholes in national law (telling the courts to stop applying their national civil law, criminal law or law of unfair competition onto keyword advertising cases)?

– Will the court follow the French terminology or will it follow the GA’s terminology, describing ads as “ads” (above or besides the search results), the organic search results as “search results” and ads which are shown inside the list of search results as “paid placement” or “Keyword Buying“?

– Will the court follow the suggestion of national courts to establish the protection for the advertising and the communication-function of famous trade marks?

– Will the court consider the different levels of protection for trade mark holders in Europe? Will French, German and Austrian trade mark holder can still oppose against the sale of their TM as a keyword, English TM-holders can’t.

– Will the ECJ finally deliver a feasible and reasonably easy to understand definition of the term “trademark use”?

– Will the ECJ find Google’s search engine service to be covered by the provider liability exception? If yes, what about AdWords and the fact that Google is one of the few search engines now (already) displaying ads on their query page?


Before closing my laptop now two more things: I am looking forward to attend the IPKat’ Google AdWords Rapid Response Seminar seminar and I’d like to point your attention to a French podcast by Frédéric Glaize, Bertrand Pautrot, Gilles Ringeisen and Cédric Manara, that will be published (aired) shortly some time soon after the publication of the ECJ’s decision…

*ECJ: “Google France v. Louis Vuitton” Expected For The 23rd Of March 2010

The ECJ has scheduled to rule on the 23rd of March on the famous Google France, Google Inc. v Louis Vuitton Malletier (joined cases C-236/08, C-237/08, C-238/08) case.

Following the heavily discussed opinion by GA Maduro much attention will be paid to the decision as, although it only/mainly concerns the liability of Google’s AdWords program,  it may also contain clues of whether or not, the ECJ sees the use of TM-terms as keyword to constitute “trademark use” and/or if the ECJ is willing to grant extra protection to the communication- or advertising functions of trademarks.

For more information please refer to OUT-LAW,  my previous posts on that matter (here & here) or see below for my graphical summary of the opinion.

Graphical Representation of the GA's Opinion by Austrotrabant. Click to enlarge

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