(openPR) Due to a variety of advertising opportunities, which are available to companies by using the internet, many litigations arise between competitors about the admissibility of different advertisements. A high potential for an argument is thereby laid by advertising with foreign trademarks as keywords or adwords. What is prohibited and what is permitted?
Adwords are terms, which are chosen or can be chosen by the advertiser as keywords. If such keywords are entered into a google search mask, advertisements (adlinks) are listed on the right sight of the screen or above the natural search results.
The European Court of Justice has already given guidelines for the handling of adwords in miscellaneous court decisions.
Thus the ECJ decided one of its first judgments on the 21.03. 2010, in a litigation between Google France Sarl and Google Inc vs. Louis Vuitton Malletier SA, Viaticum SA and Centre Nationale de recherche en relation humaine Sarl the following:
On a website of the search engine Google a company can take out an ad the way that if a specific search item is entered into the Google search mask, the ad will appear on the right side of the screen and the seeker can click on that ad, whereby per click Google will receive a predefined fee from the advertiser. In the present case companies, which partly offered imitations of products, but also serious competitors had put out ads by using registered trademarks from the original producer or a business rival. First the court clarified that the trademark is not used by the search engine Google through the mere fact that Google allows the usage of the trademark as keyword. The servicers liability is limited in cases of internet reference services, providing that the services row is neutral and his behavior is of a mere technical, automatic or passive manner and the servicer processes neither knowledge, nor control over the forwarded or stored information.
In contrast, the advertiser, who chose a competitor’s trademark as keyword could have used that trademark in an unjustified manner within the course of business. Thereby the court explains that such an unjustified usage is presumed, independent whether the search keyword appears in the company’s advertisement itself. In its considerations the court assumes that the internet user by entering a search item in a search mask, in most cases wants to find information and offers for products and services of the entered trademark. As far as also search results appear, which propose products and services provided by a competitor of the proprietor of the trademark, the internet user might consider those proposals as alternatives, whereby the advertiser uses those trademarks for products and services offered by him. The court also sees such a usage, if the advertiser, by using the trademark as keywords, pursues the object, that the internet user is misled with regard to the origin of the advertiser’s products and services, by seducing the internet user to the assumption that those products or services derive from the proprietor of the trademark or at least from an affiliated company.
In the decision of 08.06.2010, the ECJ summarized the afore mentioned decision in its judgment in the case Portakabin Ltd. and Portakabin BV vs. Primakabin BV: “As regards the function of indicating origin, the court has held that the question whether that function is adversely affected when internet users are shown a third parties ad, on the bases of a keyword identical with the trademark, will depend in particular on the manner in which that ad is presented. The function of indicating the origin of the mark will be 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 trademark or an undertaking economically linked to it or, on the contrary originate from the third party. On that point the court has also stated that, in the case where a third party’s ad suggests that there is an economic link between that third party and the proprietor of the trademark, the conclusion must be that there is an adverse effect on the function of indicating origin. Similarly, in the case where the ad, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the goods or services at issue that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and commercial message attached thereto, whether the advertiser is a third party vis-á-vis the proprietor of the trademark or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the trademark.“
In the second litigation the advertiser did not only use the trademark itself as keyword but also slight variations of the trademark such as Portacabin, Portokabin and Portocabin. With regard to the question of the usage of the trademarks through those variations, the court explained that as far as a likelihood of confusion exists, meaning that the public could believe that the respective products and services derive from the same company or an affiliated company, also the usage of slight variations of the trademark form a usage of the trademark.
An exception exists only in though far as the advertiser uses the trademark or the variations only as keywords for ads for a resale or second hand sale, whereby the original products must have been placed into circulation within the EU by the proprietor of the trademark himself or a company licensed by him and with his approval, providing that the advertiser does not suggest that the now advertised products are offered by the proprietor of the trademark or an affiliated company.
Despite the latest case law by the ECJ and several national courts, legal uncertainty remained with the users of Google Adword Tools with regard to the usage of foreign trademarks. If you or your company has any questions in this regard, we will be happy to assist you.
