Posts Tagged 'Keyword Advertising'

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

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

*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’’

*’Paid Inclusion’ / ‘Keyword Buying’ – A Dangerous Road To Go For Microsoft

Microsoft’s search engine Bing.com is obviously currently testing a new layout which includes advertisements among its search results while insufficiency labelling them as advertising. This practise is known as ‘paid inclusion’ or ‘keyword buying’ on could prove as a dangerous road to go for Microsoft.

Yahoo! has already tried to go this way in 2009 but soon again ended its paid inclusion program after intensive controversy on this issue. Continue reading ‘*’Paid Inclusion’ / ‘Keyword Buying’ – A Dangerous Road To Go For Microsoft’

*BGH: Clear Win For Google AdWords in German Eis.de / Bananabay II Case

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’

*First German Post-Google-France Ruling: OLG Braunschweig Compares Google To A Shop-Assistant And Once Again Finds A Trademark Infringement

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’

*Where To Draw The Line? The Main Question Left After Google France

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’

*One To Cure Them All? – Is The ECJ Using The Very Same Formula To Answer All Questions Related To Keyword Advertising?

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?’

*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.

*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. 🙂


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