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ECJ ruling Primakabin / Portakabin

The Court of Justice has issued its fourth decision about the Google Adwords system (case C-558/08). The request originated this time from the Netherlands.

 

The ruling was given in a case pertaining to temporary cabin maker Portakabin and its competitor Primakabin. Primakabin chose the keywords 'portakabin', 'portacabin', 'portokabin' and 'portocabin' as its search terms for Google Adwords.

The ruling of the ECJ: The court reiterates its position from the previous AdWords cases that a trade mark proprietor can oppose to the use of a keyword, identical with its mark, if that use is liable to cause detriment to any of the functions of that mark (L’Oréal and Others, paragraph 60, and Google France and Google, paragraph 76). Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services (‘the function of indicating origin’), but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising (L’Oréal and Others, paragraph 58, and Google France and Google, paragraph 77). 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 party’s ad, on the basis of a keyword identical with a mark, 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 trade mark or an undertaking economically linked to it or, on the contrary, originate from a third party (Google France and Google, paragraphs 83 and 84, and BergSpechte, paragraph 35).

As for the keywords that reproduce the trademark but contain spelling errors, the national court must assess whether: a) the relevant signs are identical with the trade mark because they contain differences which are so insignificant that they may go unnoticed by an average consumer (making them fall within the scope of Article 5(1)(a) of the Directive), or whether b) the relevant signs are not identical to that trade mark, but are similar to it within the meaning of Article 5(1)(b) of the Directive.

In the latter case, it will be for the national court to determine whether there is a likelihood of confusion. This should be assessed in the same way as the assessment of whether there is an adverse effect on the trade mark's function of indicating origin.

The ECJ then provided some - non exhaustive - guidance to the referring court on how to interpret the function of indication origin / to assess the likelihood of confusion:

  • It must be taken of the fact that the sale of second-hand goods under a trade mark is a well-established form of business, with which the average consumer will be familiar. Therefore, it cannot be held, merely on the basis of the fact that an advertiser uses another person’s trade mark with additional wording indicating that the relevant goods are being resold, such as ‘used’ or ‘second-hand’, that the ad creates the impression that the reseller and the trade mark proprietor are economically linked or that the ad is seriously detrimental to the reputation of that mark.

  • In those circumstances, in which a reseller specialises in the resale of goods under another person’s trade mark, the reseller cannot be prohibited from using that mark in order to advertise its resale activities which include – apart from the sale of second-hand goods under that mark – the sale of other second-hand goods, unless the resale of those other goods risks, in the light of their volume, their presentation or their poor quality, seriously damaging the image which the proprietor has succeeded in creating for its mark.

 

The exact answers of the ECJ:

1.      Article 5(1) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that a trade mark proprietor is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with, or similar to, that mark, which that advertiser has selected for an internet referencing service without the consent of the proprietor, in relation to goods or services identical to those in respect of which the mark is registered, where that advertising does not enable average 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 from an undertaking economically linked to it or, on the contrary, originate from a third party.

2.      Article 6 of Directive 89/104, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that, where use by advertisers of signs identical with, or similar to, trade marks as keywords for an internet referencing service is liable to be prohibited pursuant to Article 5 of that directive, those advertisers cannot, in general, rely on the exception provided for in Article 6(1) in order to avoid such a prohibition. It is, however, for the national court to determine, in the light of the particular circumstances of the case, whether or not there was, in fact, a use, within the terms of Article 6(1), which could be regarded as having been made in accordance with honest practices in industrial or commercial matters.

3.      Article 7 of Directive 89/104, as amended by the Agreement on the European Economic Area of 2 May 1992, must be interpreted as meaning that a trade mark proprietor is not entitled to prohibit an advertiser from advertising – on the basis of a sign identical with, or similar to, that trade mark, which that advertiser chose as a keyword for an internet referencing service without the consent of that proprietor – the resale of goods manufactured and placed on the market in the European Economic Area 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.

The national court, which must assess whether or not there is such a legitimate reason in the case before it:

–      cannot find that the ad gives the impression that the reseller and the trade mark proprietor are economically linked, or that the ad is seriously detrimental to the reputation of that mark, merely on the basis that an advertiser uses another person’s trade mark with additional wording indicating that the goods in question are being resold, such as ‘used’ or ‘second-hand’;

–      is obliged to find that there is such a legitimate reason where the reseller, without the consent of the proprietor of the trade mark which it uses in the context of advertising for its resale activities, has removed reference to that trade mark from the goods, manufactured and placed on the market by that proprietor, and replaced it with a label bearing the reseller’s name, thereby concealing the trade mark; and

–      is obliged to find that a specialist reseller of second-hand goods under another person’s trade mark cannot be prohibited from using that mark to advertise to the public its resale activities which include, in addition to the sale of second-hand goods under that mark, the sale of other second-hand goods, unless the sale of those other goods, in the light of their volume, their presentation or their poor quality, risks seriously damaging the image which the proprietor has succeeded in creating for its mark.

 

 

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