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’’
The German Federal High Court on Civil matter (BGH) ruled in early January that the booking of a sign identical to a trademark to trigger ads for similar products or services does not infringe TM law as long as the text of the ad does not contain the TM and the Display-URL points to a third-party website.
Today the full text of the decision got published (BGH, 13.01. 2011, Az.: I ZR 125/07).
The court not only ruled on the trademark aspects but also used the occasion to state expressively that AdWords and “MetaTags” have to be treated differently and that Keyword Advertising does notconstitute an act of unfair competition.
The decision constitutes a significant victory for Google AdWords and its customers in Germany. Although the author does not fully understand what the court was trying to say in para 27, the decision is of surprisingly clear and also brings long-desired clarity to other legal questions related to keyword advertising.
As the author is painstakingly trying to finish a paper on L’Oreal on time here are just a few highlights:
Continue reading ‘*BGH: Clear Win For Google AdWords in German Eis.de / Bananabay II Case’
The OLG Braunschweig is well know among German lawyers for being very trademark-owner friendly and the ECJ’s Google France ruling obviously hasn’t changed much about this. In a recent decision the court found, dissenting from the former BGH PCB-ruling, that users when entering a trademark as query and subsequently being displayed an ad assume that there has to be “some kind of economical connection” between the search term entered and the displayed ads. Continue reading ‘*First German Post-Google-France Ruling: OLG Braunschweig Compares Google To A Shop-Assistant And Once Again Finds A Trademark Infringement’
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. Continue reading ‘*Where To Draw The Line? The Main Question Left After Google France’
Tags: Bananabay, Bergspechte, Einringen in den Kundenkreis eines Mitbewerbers, Eis.de, Google France, Irreführung, Kennzeichenmissbrauch, Keyword Advertising, Law of Unfair Competition, Portakabin, Rechtsbruch, Rufausbeutung, Suchwortwerbung, UWG, Wettbewerbsrecht
Disclaimer: This is a 100% geeky trademark law post. Some readers might find it a bit difficult to understand… 😉
When analysing the ECJ’s most recent keyword advertising decision Portakabin I was surprised to see that the very same formula the court first used in Google France to define if the function of indicating origin got adversely affected in respect to Art 5 (1) lit. a …
84: The function of indicating the origin of the mark is adversely affected if 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.
Continue reading ‘*One To Cure Them All? – Is The ECJ Using The Very Same Formula To Answer All Questions Related To Keyword Advertising?’