• ECJ Asked to Evaluate Trademark Law Aspects of Google's Adwords System
  • May 5, 2009 | Author: Christoph P. M. De Preter
  • Law Firm: Crowell & Moring - Brussels Office
  • In the Adwords saga, the Dutch Supreme court has submitted a large number of questions to the European Court of Justice (ECJ) which aim at assessing whether and under which conditions users of Google's Adwords system can be held liable for trademark infringement for establishing sponsored hyperlinks.

    Introduction
    The Dutch Supreme Court (the 'Hoge Raad') has filed a reference for a preliminary ruling with the European Court of Justice (ECJ) in a litigation between the companies Portakabin and Primakabin.

    The questions asked in the referral
    The Dutch Supreme Court has made a relatively extensive referral to the ECJ.

    Interestingly, the first questions address the issue whether the use of a trademark in the Adwords system constitutes at all a trademark use within the meaning of Article 5.1.a of the Trademark Directive 89/104/EEC. In that regard, the Supreme Court makes a distinction whether the hyperlinks that arise out of the Adwords linking are apparent (appearing as 'sponsored links') or are integrated into the ordinary search results. Also, the Supreme Courts makes a distinction as to whether the advertiser using the Adwords system actually sells the goods or services commercialized under the underlying trademark or not, and whether the actual trademark is used or a 'typo' variant thereof.

    The fifth question submitted to the ECJ actually concerns a hypothesis already addressed by the Brussels Court of Appeal (see our other contribution in this newsletter), namely whether, even if the Adwords system would not constitute trademark use, there could still be a trademark infringement under Article 5.5 of the Trademark Directive.

    The complete wording of the referral is as follows:

    1. (a) Where a trader in certain goods or services ('the advertiser') avails himself of the possibility of submitting to the provider of an internet search engine an adword [when advertising via the internet, it is possible to pay to use 'adwords' on search engines such as Google. When such an adword is keyed into the search engine, a reference to the advertiser's website appears either in the list of webpages found, or as an advertisement on the right-hand side of the page showing the results of the search, under the heading 'Sponsored links'] which is identical to a trade mark registered by another person ('the proprietor') in respect of similar goods or services, and the adword submitted - without this being visible to the search engine user - results in the internet user who enters that word finding a reference to the advertiser's website in the search engine provider's list of search results, is the advertiser 'using' the registered trade mark within the meaning of Article 5(1)(a) of Directive 89/104/EEC? 1
      (b) Does it make a difference in that regard whether the reference is displayed in the ordinary list of webpages found; or in an advertising section identified as such?
      (c) Does it make a difference in that regard whether, even within the reference notification on the search engine provider's webpage, the advertiser is actually offering goods or services that are identical to the goods or services covered by the registered trade mark; or whether the advertiser is in fact offering goods or services which are identical to the goods or services covered by the registered trade mark on a webpage of his own, which internet users (as referred to in Question 1(a)) can access via a hyperlink in the reference on the search engine provider's webpage?
    2. If and in so far as the answer to Question 1 is in the affirmative, can Article 6 of Directive 89/104, in particular Article 6(1)(b) and (c), result in the proprietor being precluded from prohibiting the use described in Question 1 and, if so, under what circumstances?
    3. In so far as the answer to Question 1 is in the affirmative, is Article 7 of Directive 89/104 applicable where an offer by the advertiser, as indicated in Question 1, relates to goods which have been marketed in the European Community under the proprietor's trade mark referred to in Question 1 or with his permission?
    4. Do the answers to the foregoing questions apply also in the case of adwords, as referred to in Question 1, submitted by the advertiser, in which the trade mark is deliberately reproduced with minor spelling mistakes, making searches by the internet-using public more effective, assuming that the trade mark is reproduced correctly on the advertiser's website?
    5. If and in so far as the answers to the foregoing questions mean that the trade mark is not being used within the meaning of Article 5(1) of Directive 89/104, are the Member States entitled, in relation to the use of adwords such as those at issue in this case, simply to grant protection - under Article 5(5) of that directive, in accordance with provisions in force in those States relating to the protection against the use of a sign other than for the purposes of distinguishing goods or services - against use of that sign which, in the opinion of the courts of those Member States, without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark, or do Community-law parameters associated with the answers to the foregoing questions apply to national courts?

    Conclusion: The ECJ will finally have the opportunity to have the last word in the Adwords saga. The Dutch Supreme Court has had the merit of asking very broadly formulated questions in its referral, so that the ECJ will be able to provide complete guidance. It remains to be seen whether national case law, such as the Brussels Court of Appeal's decision in the eBay / Polo-Lauren case, will be consistent with the ECJ's findings.

    References: Reference for a preliminary ruling from the Hoge Raad der Nederlanden lodged on 17 December 2008 - Portakabin Limited and Portakabin BV v Primakabin BV

    (Case C-558/08), www.curia.eu