"It's the ad-text, stupid" Conclusions drawn from ehe ECJ's Google France rulings

2,253 views

Published on

Presentation held at the Know Right 2010 conference in Vienna 05.05.2010.

Legal analysis of the ECJ' Google France Rulings (23.03.2010, C‑236/08, C‑237/08 and C‑238/08) focusing on trademark law, law of unfair competition and the liability exemption.

Published in: Business, Technology, Design
0 Comments
2 Likes
Statistics
Notes
  • Be the first to comment

No Downloads
Views
Total views
2,253
On SlideShare
0
From Embeds
0
Number of Embeds
20
Actions
Shares
0
Downloads
0
Comments
0
Likes
2
Embeds 0
No embeds

No notes for slide

"It's the ad-text, stupid" Conclusions drawn from ehe ECJ's Google France rulings

  1. 1. “It’s the ad-text, stupid ” Conclusions drawn from the ECJ’s Google France Rulings KnowRight 2010, Maximilian Schubert Vienna, 05.05.2010 1
  2. 2. Content ‣ Introduction ‣ Explanation & Differentiation ‣ 2007 - 2010; Any Changes? ‣ Ongoing Legal Discussion ‣ Trademark Use - Art 5 ‣ Liability Exemption - Art 14 ‣ The Google France Ruling ‣Trademark Issues ‣ Liability Exemption ‣ Summary & Outlook 2
  3. 3. Simplified scheme of Search Engine Advertising User User enters query: hotel edinburgh scotsman 846,000 relevant pages Index Search engine (Page) Rank Ranking Search Engine Results Page (SERP) 3
  4. 4. Simplified scheme of Search Engine Advertising Advertiser books following ‘keywords’ User Advertiser - hotel - edinburgh User enters query: - scotsman hotel edinburgh scotsman Keyword Options: “broad match” Local target: Austria, Vienna Bid: EUR 0,15 per click 846,000 relevant pages Index Search Ad- engine Words (Page) Rank Ranking Search Engine Results Page (SERP) 3
  5. 5. 1. Differentiation: Top-Ad v. Side-Ad 4
  6. 6. 1. Differentiation: Top-Ad v. Side-Ad ‣ Top-Ad 4
  7. 7. 1. Differentiation: Top-Ad v. Side-Ad ‣ Top-Ad ‣ Side-Ad 4
  8. 8. 1. Differentiation: Top-Ad v. Side-Ad ‣ Top-Ad ‣ Side-Ad ‣ “organic” Search Results 4
  9. 9. 1. Differentiation: Top-Ad v. Side-Ad illustrative! ‣ Top-Ad ‣ Side-Ad ‣ “organic” Search Results Google Golden Triangle - Eyetracking how people view search results I Eyetools http://eyetools.com/research_google_eyetracking_heatmap.html (18.03.2010). 4
  10. 10. 2. Differentiation: Adv- v. Adv+ Does the text-ad bear the protected sign? No: “Adv-” Yes: “Adv+” “Adv-” = sign booked as keyword & sign not shown in the text of the ad. “Adv+” = sign booked as keyword & sign shown in the text of the ad. 5
  11. 11. 3. Differentiation: Keyword Options liberal restrictive bei Wein & Co Wien Spirituosen Keyword Wein & Co Options Flaschenwein billiger Wein 6
  12. 12. 3. Differentiation: Keyword Options high tolerance ads shown often ‘high’ costs liberal restrictive bei Wein & Co Wien Spirituosen rd Wein & Co wo ns ey tio K p O Flaschenwein billiger Wein 6
  13. 13. 3. Differentiation: Keyword Options low tolerance few ads shown ‘low’ costs liberal restrictive bei Wein & Co Wien Spirituosen Ke yw Op or Wein & Co tio d ns Flaschenwein billiger Wein 6
  14. 14. ‘Keyword Agenda Buying’ v. ‘Keyword Advertising’ Search Engine Marketing Keyword Advertising: Keyword Buying: Top- & Side Ads Ads in the Search Results Top-Ad Top-Ad (organic) (organic) Side- (organic) Side- Search Results Search Results Ad Search Results Ad ‣ Search Engine Marketing is the umbrella term, also including Search Engine Optimisation. ‣ Keyword Advertising is the display of ads besides the search results. [1] ‣ Keyword Buying is an artificial word-creation in German to distinguish advertising inside the ‘organic’ search results from regular keyword advertising. 1: Fain/Pedersen, Sponsored Search: a Brief Histroy, http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.92.987&rep=rep1&type=pdf (29.04.2010). 7
  15. 15. Differentiations & terms ‘Top Ad’ v. ‘Side Ad’ ‘Adv+’ v. ‘Adv-’ Keyword Options ‘Keyword Buying’ v. ‘Keyword Advertising’ 8
  16. 16. 2007 - 2010; Any Changes? ‣ Ongoing developments: ‣ Tailored Advertising (Location, Language, etc.) ‣ Personalised Search: Search results influenced by previous searches (evidence?) ‣ Blacklist for Search Ads (Ads will not show for specific IPs) ‣ Google Suggest (Did you mean?) ‣ Advertising on mobile devices (smaller screens) ‣ Advertising in an augmented reality environment (continuous flow of information) ‣ A new Google Layout? Universal Search? 9
  17. 17. Change: Agenda e.g. ‘Google Suggest’ ‣ Users don’t type in the complete search query as Google already offers suggestions while the user is typing. 10
  18. 18. Change: Agenda e.g. “Google Suggest” ‣ The “Google Suggest” function can lead to a significant shift in demand. “Grunderwerbsteuer”: real estate transfer tax [Stefens, Google Suggest rulez the SERP, http://seo.de/2253/google-suggest-rulez-the-serps/ (22.02.2010)] 11
  19. 19. Change: Agenda e.g. “Google Suggest” ‣ The “Google Suggest” ... a way of addressing customers even before they have fully articulated what they are actually searching for? 12
  20. 20. Change: Agenda e.g. “Google Suggest” ‣ The “Google Suggest” ... a way of addressing customers even before they have fully articulated what they are actually searching for? 13
  21. 21. Content ‣ Introduction ‣ Explanation & Differentiation ‣ 2007 - 2010; Any Changes? ‣ Ongoing Legal Discussion ‣ Trademark Use - Art 5 ‣ Liability Exemption Art 14 ‣ The Google France Ruling ‣Trademark Issues ‣ Liability Exemption ‣ Summary & Outlook 14
  22. 22. Art 5 (1) Directive 89/104/EEC (‘Trademark Dir’) - Basics The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark. Art 5 (1) Directive 89/104/EEC 15
  23. 23. Art 5 (1) Directive 89/104/EEC - Basics The proprietor is entitled to prevent all third parties not having his consent from using any sign in the course of trade if: lit a. identical + identical = ! lit b. identical /similar sign + identical /similar goods + likeliness of confusion = ! Art 5 (1) Directive 89/104/EEC 16
  24. 24. Art 14 Directive 2000/31/EC - Liability Exemption ‘Hosting’ 1. Where an information society service is provided that consists of the storage of information provided by a recipient of the service, [...] the service provider is not liable for the information stored at the request of a recipient of the service, on condition that: (a) the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or (b) the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information. Art 14 Directive 2000/31/EC 17
  25. 25. Art 14 Directive 2000/31/EC - Liability Exemption The service provider is not liable for the information stored at the request of a recipient of the if: ‣ No actual knowledge of illegal activity ‣ Illegal activity or information is not apparent ‣ Upon obtaining knowledge acts expeditiously to remove or to disable access. Art 14 Directive 2000/31/EC 18
  26. 26. Content ‣ Introduction ‣ Explanation & Differentiation ‣ 2007 - 2010; Any Changes? ‣ Ongoing Legal Discussion ‣ Trademark Use - Art 5 ‣ Liability Exemption Art 14 ‣ The Google France Ruling ‣Trademark Issues ‣ Liability Exemption ‣ Summary & Outlook 19
  27. 27. ECJ: Issues covered by the references: C -236/08 C -237/08 C -238/08 C -278/08 Louis V Viaticum Tiger SARL Bergspechte Trade Mark Issues according to Directive 89/104 EEC & Regulation 40/94 Art 5 Art 5 (1) Art 5 (1) Art 5 (1) (1) & (2) Liability Exception according to Directive 2000/31 EC Ads inside the (organic) Keyw. search results = Keyword Buying Art 5 (2) Art 14 Art 5 (1) Buying French references dealt only with the liability of Google / Google AdWords. Austrian references dealt only with the liability of the advertiser. Art 14 Art 14 Thus Art 5 (2) in respect to the liability of advertisers remained unanswered. 20
  28. 28. OGH: Keyword Buying? Simplified layout of a SE List of Hits (“Trefferliste”) List of Hits (“Trefferliste”) result page narrow meaning broad meaning Top-Ad Top-Ad Top-Ad (organic) Side- (organic) Side- (organic) Side- Search Results Ad Search Results Ad Search Results Ad List of Hits: List of Hits: (organic) Search Results (organic) SR + Top Ads 21
  29. 29. OGH: Keyword Buying? [6] [...] That advertising link appears under the heading ‘sponsored links’, which is displayed either on the right-hand side of the screen, to the right of the natural results, or on the upper part of the screen, above the natural results. [43] [...] In those circumstances, examination of the protection conferred by a trade mark on its proprietor in the event of the display of advertisements of third parties which are not ‘sponsored links’ would not be useful in resolving the dispute in the main proceedings. In the view of the ECJ, Google does not display advertisements inside their ‘organic’ search results. ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171, par 6, 43. 22
  30. 30. Google France - Art 5 (1) (a) By application of Article 5(1)(a) of Directive 89/104 [...] the proprietor of a trade mark is entitled to prohibit a third party from using [a sign identical with that trade mark] - without the proprietor’s consent, - when that use is in the course of trade, - in relation to goods or services which are identical with, or similar to, those for which that trade mark is registered - and affects, or is liable to affect, the functions of the trade mark. lit a. identical sign + identical goods + functions affected = ! ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 49 23
  31. 31. O2 - Art 5 (1) (b) The proprietor of a registered mark may prevent the use of a sign by a third party which is identical with, or similar to, his mark under Article 5(1)(b) of Directive 89/104 only if the following four conditions are satisfied: - that use must be in the course of trade; - it must be without the consent of the proprietor of the mark; - it must be in respect of goods or services which are identical with, or similar to, those for which the mark is registered, and - it must affect or be liable to affect the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, by reason of a likelihood of confusion on the part of the public. lit b. identical /similar sign + identical /similar goods + ess. func. affected = ! ECJ, 12.06.2008, C‑533/06, O2 Holdings and O2, ECR I‑4231, par 57. 24
  32. 32. Comparison: Likeliness of Confusion - Essential Functions Affected [39] Art 5 (1) lit. b: [...] whether there is a likelihood of likeliness of confusion confusion when internet users are shown, on the basis of a keyword similar to a mark, a third party’s ad which... ... 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. [35] Art 5 (1) lit a. The function of indicating the origin of the ess. funct. affected 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. ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171. 25
  33. 33. Comparison: Likeliness of Confusion - Essential Functions Affected ... 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. ... 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. ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171, par 39, 35. 26
  34. 34. Comparison: Likeliness of Confusion - Essential Functions Affected [39] [...] whether there is a likelihood of confusion when internet users are shown, on the basis of a keyword similar to a mark, a third party’s ad which... ... 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. ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171, par 39, 35. 27
  35. 35. Comparison: Likeliness of Confusion - Essential Functions Affected ... 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. ess. funct. affected = likeliness of confusion The criteria for adversely affecting the essential TM-function and the likeliness of confusion are identical. ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171. 28
  36. 36. Art 5 (1) Directive 89/104/EEC - Comparison pre Google France lit a. identical + identical = ! lit b. identical /similar + identical /similar + likeliness of confusion = ! 29
  37. 37. " Art 5 (1) Directive 89/104/EEC - Comparison pre Google France lit a. identical + identical = ! lit b. identical /similar + identical /similar + likeliness of confusion = ! post Google France lit a. identical + identical + functions affected = ! lit b. identical /similar + identical /similar + ess. funct. affected = ! sign goods 30
  38. 38. Art 5 (1) Directive 89/104/EEC - Summary HIGH LEVEL OF PROTECTION Art 5 (2) detrimental use functions Art 5 (1) lit a. affected NEW! Art 5 (1) lit b. ess. funct. affected = likeliness of confusion LOW 31
  39. 39. Art 5 (1) Directive 89/104/EEC - Summary HIGH LEVEL OF PROTECTION Art 5 (2) detrimental use Art 5 (1) lit a. functions ‣ Function of Origin affected ‣ Advertising Function Art 5 (1) lit b. ess. funct. affected ‣ Function of Origin LOW 32
  40. 40. ECJ Google France - Trademark Functions According to Article 5(1)(a) of Directive 89/104 the proprietor of a trade mark is entitled to prohibit a third party from using, that sign if that use affects, or is liable to affect, the functions of the trade mark. Those functions include not only the essential function of the trade mark ,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. Function of Origin TM Functions Advertising Function ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 49, 77. 33
  41. 41. Content ‣ Introduction ‣ Explanation & Differentiation ‣ 2007 - 2010; Any Changes? ‣ Ongoing Legal Discussion ‣ Trademark Use - Art 5 ‣ Liability Exemption Art 14 ‣ The Google France Ruling ‣Trademark Issues ‣ Function of Origin ‣ Advertising Function ‣ Liability Exemption ‣ Summary & Outlook 34
  42. 42. ECJ Google France - ‘Function of Indicating Origin’ Function of Origin The essential function of a trade mark is to guarantee the identity of the origin of the marked goods or service to the consumer or end user by enabling him to distinguish the goods or service from others which have another origin. The question whether that function is adversely affected by keyword advertising depends in particular on the manner in which that ad is presented. National court have to assess, on a case-by-case basis, whether the facts of the dispute before it indicate adverse effects, or a risk thereof, on the function of indicating origin. ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 82, 83, 88. 35
  43. 43. ECJ Google France - ‘Function of Indicating Origin’ Function of Origin Function of Indicating Origin is adversely affected if: ‣ the ad suggests that there is an economic link between that third party and the proprietor of the trade mark. ‣ 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 the commercial message attached thereto, whether the advertiser is a third party vis- à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor. ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 89, 90. 36
  44. 44. ECJ Google France - ‘Function of Indicating Origin’ What does an ad have to look like, so as not to impair the function of origin? ‣ Is it enough for a third party just not to show the competitor’s TM in the ad? (“Adv-”) ‣ Competitor obliged also to display the competing brand? ‣ Different situation if TM-owner also displays text ads? ‣ Why should a TM-owner sponsor all the ads shown? 37
  45. 45. ECJ Google France - ‘Function of Indicating Origin’ What does an ad have to look like, so as not to adversely affect the function of origin? Text Ads: Up to 4 lines, Headline: max 25 signs Following lines: 35 signs each Display URL Further content & formal restraints: e.g. price, goods & service offered 38
  46. 46. Inhalt ‣ Introduction ‣ Explanation & Differentiation ‣ 2007 - 2010; Any Changes? ‣ Ongoing Legal Discussion ‣ Trademark Use - Art 5 ‣ Liability Exemption Art 14 ‣ The Google France Ruling ‣Trademark Issues ‣ Function of Origin ‣ Advertising Function ‣ Liability Exemption ‣ Summary & Outlook 39
  47. 47. ECJ Google France - Advertising Function Advertising Function The trade mark owner may have not only the objective of indicating the origin of its goods or services, but also that of using its mark for advertising purposes designed to inform and persuade consumers. The proprietor of a trade mark is entitled to prohibit a third party from using his trade mark if that use adversely affects the owner’s use as a factor in sales promotion or as an instrument of commercial strategy. With regard to the use of that sign for keyword advertising, it is clear that that use is liable to have certain repercussions on the advertising use of that mark by its owner and on his/her commercial strategy. ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 91, 92, 93. 40
  48. 48. ECJ Google France - Advertising Function Advertising Function Repercussions caused by the use of a sign identical with the trade mark by third parties do not of themselves constitute an adverse effect on the advertising function of the trade mark. When internet users enter the name of a trade mark as a search term, the home and advertising page of the proprietor of that mark will appear in the list of the natural results, usually in one of the highest positions on that list. That display means that the visibility to internet users is guaranteed. Thus it must be concluded that use of a sign identical with another person’s trade mark for keyword advertising is not liable to have an adverse effect on the advertising function of the trade mark. ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 95, 97, 98. 41
  49. 49. ECJ Google France - Advertising Function Advertising Function ‣ Whatshould happen in the unusual case that the TM- owners website is not included in the natural search results? ‣ In practise only the first couple of results count. Is it still enough for the TM-owner to be on the second page? (“Primacy Effect”) ‣ Is there a duty for competitors to check if the TM-holder’s website is (still) being displayed? 42
  50. 50. Content ‣ Introduction ‣ Explanation & Differentiation ‣ 2007 - 2010; Any Changes? ‣ Ongoing Legal Discussion ‣ Trademark Use - Art 5 ‣ Liability Exemption Art 14 ‣ The Google France Ruling ‣Trademark Issues ‣ Liability Exemption ‣ Summary & Outlook 43
  51. 51. ECJ Google France - Liability Exemption The liability of a referencing service may be limited under Article 14 of Directive 2000/31, if the role played by that service provider is neutral, in the sense that its conduct is merely technical, automatic and passive, pointing to a lack of knowledge or control of the data which it stores. With regard to Google AdWords, it is apparent that, with the help of software which it has developed, Google processes the data entered by advertisers and the resulting display of the ads is made under conditions which Google controls. Thus, Google determines the order of display according to, inter alia, the remuneration paid by the advertisers. ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par. 114, 115, 116. 44
  52. 52. ECJ Google France - Liability Exemption The mere facts that the referencing service is subject to payment, that Google sets the payment terms or that it provides general information to its clients cannot have the effect of depriving Google of the liability exemptions.The fact that Google matches keywords and search terms is also not sufficient of itself to justify the view that Google has knowledge of, or control over, the data entered into its system by advertisers and stored in memory on its server. The role played by Google in the drafting of the commercial message which accompanies the advertising link or in the establishment or selection of keywords is however relevant. The national court, which is best placed to be aware of the actual terms on which the service is supplied, must assess whether the role thus played by Google corresponds to that described in Art 14 of Directive 2000/31. ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 116, 117, 118, 119. 45
  53. 53. ECJ Google France - Liability Exemption - Keyword Tool (neutral) - Price Setting Mechanism (neutral) - Broad Matching Function (neutral) - Display of Ads (neutral) . Every part considered on its own, appears neutral, thus the liability exemption might be applied. But however, should the broader concept of selling ‘user attention’ really be deemed neutral? 46
  54. 54. Content ‣ Introduction ‣ Explanation & Differentiation ‣ 2007 - 2010; Any Changes? ‣ Ongoing Legal Discussion ‣ Trademark Use - Art 5 ‣ Liability Exemption Art 14 ‣ The Google France Ruling ‣Trademark Issues ‣ Liability Exemption ‣ Summary & Outlook 47
  55. 55. OGH: Bergspechte Outlook The Austrian OGH presupposed that Art 5 (1) (a) is infringed straight away (no likeliness of confusion required) if keyword advertising is seen as a ‘use’ in the sense of Art 5 (1). The ECJ stated in its recent judgements that Art 5 (1) (a) is only fulfilled if the essential function, the function of indicating origin is affected. Thus also in cases of Art 5 (1) (a) (identical/identical) there is the requirement that the function of origin is adversely affected (= ! likeliness of confusion). [VI. 10] “However, if the advertisement is clearly separated from the list of search results [‘Trefferliste’] and clearly labeled as advertisement, a normally informed and reasonably attentive internet users will not assume any such connection.” [in respect to Art 5 (1) (b)] OGH, 20.05.2008, 17 Ob 3/08b, Bergspechte. 48
  56. 56. Cour de Cassation: French Cases Outlook “You must bear in mind, that the court is in France, the claimant is French, the defendant is American. Where do you think this will lead?” Michael Edenborough, at the IPKats’s Google AdWords Rapid Response Seminar, London, 25.03.2010. 49
  57. 57. Summary & Outlook ‣ Change in the concept of trademark protection. ‣ Keyword Advertising on itself does not infringe function of origin, only the content might. ‣ Unclear scope of the protection of the advertising function. ‣ Liability of referencing services (AdWords) still not clear. ‣ No legal certainty ...yet. Many questions remain... 50
  58. 58. Thank You Agenda For Your Attention Mag. Maximilian Schubert LL.M. Jurist.0.8.15@gmail.com www.austrotrabant.at 51
  59. 59. BACKUP Agenda BACK UP 52
  60. 60. Art 5 (2) Directive 89/104/EEC ...[T]he proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. identical /similar + different + detrimental use = ! sign product Art 5 (2) Directive 89/104/EEC 54
  61. 61. Austrian position concerning keyword advertising MschG UWG Top-Ad " " “Adv+” Side-Ad " " Top-Ad “Adv-” Side-Ad 56
  62. 62. Austrian position concerning keyword advertising MschG UWG Top-Ad " " “Adv+” Side-Ad " " Top-Ad TM use?** “List of Hits”* “Adv-” Side-Ad ! 56
  63. 63. Austrian position concerning keyword advertising MschG UWG Top-Ad " " “Adv+” Side-Ad " " Top-Ad TM use?** “List of Hits”* “Adv-” Side-Ad TM use?** ! *See Keyword Buying -above- ** Reference to the ECJ, OGH, 20.05.2008, 17 Ob 3/08b, Bergspechte. 56
  64. 64. Opinion Maduro, Google France Only for TM Issues dealt with Criteria for trademark infringement [54. & Fn 21.] with a rep. trade in the GA’s opinion i) no consent ii) in the iii) relates to iv) affects main affects other mark by TM holder course of trade goods/services TM function TM functions infringement Display of natural results by Google (72.) ! ! ! " (86.-92.) NO (no confusion) Display of advertiser’s ads by Google (70.) ! ! ! (79.-81.) " “no risk of confusion on (86.-92.) the side of the NO (no confusion) consumer” Allowing advertisers to select keyword by Google (60.) ! ! " (62.-67.) " (69.) NO (different goods & no confusion) “other side of the coin” Booking of keyword by advertiser (147.) ! " (151.) NO (private, not in the course of trade) MAYBE Use of TM in the text of ads by advertiser (46.) ! ! ! ! (153.) (if ad or website creates confusion) MAYBE Contributory liability by Google/AdWords (114.) ! ! ! ! (123.) (under certain circumstances) Infringement of TMs with reputation (93.) ! ! ! not required (94.) " (113.) NO (result of a balance of interests) Directive AdWords Yes ! Exception AdWords No ! MAYBE Liability Exception Applicable? applicable? for AdWords Art. 12-14 Directive 2000/31 " (136.) Google Yes ! (137.) Google Maybe (“not neutral”) ! criteria fulfilled ! criteria hypothetically fulfilled " criteria not fulfilled 57
  65. 65. Opinion Maduro, Google France AdWord’s service establishes a link Ads by the advertiser, between the keyword/TM and the might be infringing, (153.) goods of the advertiser. (79.) depending on the content of Thus iii) criteria is fulfilled. the ad and the website = if they create confusion. However there is no risk of confusion (86.-92.) Liability governt by Thus the iv) criteria is not fulfilled. national law Use 2 Advertiser’s Adwords Website Google SERP Keyword Advertiser Selection Use 1 Buying/booking of the keyword by the Advertiser is a private act and thus no use in commerce. Thus the ii) criteria is not fulfilled. (151.) The sale /allowing of selection of the keywords by Adwords is not a use for related to similar goods and service as Adwords sells keywords and NOT good or services which are similar to the ones of the TM holder. Thus the iii) criteria is not fulfilled. (67.) 58
  66. 66. Changes of the Google AdWords Complaint Procedure “the rest” “the 194” e.g. Austria, (as of 4th of June) Germany, etc. e.g. U.S., Canada, UK, Ireland + 190 others U.S. (as of 15th of June) Filing of a complaint with Google AdWords Search Engines Result Page Use as Keyword to trigger the ad Use in Text of the ad 59
  67. 67. OGH 17Ob3/08b 20.05.2008 Adv- preliminary ruling: Bergspecht AUT function as advertising - communication - Arsenal [60] indication of function function origin Anheuser Busch Yes [VI. 4. iVm 11.] trade name No [VI. 3.] “used in advertisement” Arsenal decoration No [VI. 3.] information BMW/Deenik No [VI. 3.] about the p. purpose of distinguishing g&s Arsenal [50.] protection only for well known TMs [11.] autonomous protection indication of origin affected No of the advertising & [VI. 6., 7.] “average user” [8.] communicational function [6.] ECJ Yes Yes No EU: Art 5 (1) S.2 lit a identical goods similar goods & EU: Art 5 (1) S.2 lit b & services services [VI. 9. last sanction-able sentence] position? “likelihood of confusion” use? likelihood of confusion extensive interpretation [VI. 9., 10.] [VI.12.] likelihood of confusion Side Ad Top Ad no likelihood of confusion [VI. 10.] [VI.10.] Version: 13.04.2009, 17:03 60

×