Another keywords decision is issued - but this time Google is not a party

European Union
In Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Guni (Case C-278/08, March 25 2010), a reference for a preliminary ruling from the Oberster Gerichtshof (Austria) dating back to June 2008, the Court of Justice of the European Union (ECJ) has considered another AdWords case, only two days after its long-awaited decision in Google (Joint Cases C-236/08, C-237/08 and C-238/08).
This case involved Google's 'paid referencing service', which enables any economic operator, by means of the reservation of a keyword, to place a link to its own advertisement which is flagged as a 'sponsored link' when the user of its search engine employs that keyword as a search term, in addition to the 'natural results' of the search which the user gets irrespective of whether the keyword is an AdWord.

Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH owns a figurative trademark containing the words 'BergSpechte' in capital letters and 'Outdoor-Reisen und Alpinschule Edi Koblmüller' in smaller script. The mark is registered in Classes 25 (clothing), 39 (travel services) and 41 (various teaching, entertainment and sporting services) of the Nice Classification.
Another company, Reisen, competed with BergSpechte in providing ‘outdoor’ tours. It purchased ‘Edi Koblmüller’ and ‘Bergspechte’ as AdWords that generated the appearance of its own advertisements as sponsored links. BergSpechte sought and obtained an interim injunction from the Landesgericht Wels. Protective measures were imposed on Reisen, prohibiting it from directing users to its own website by a link on the pages containing lists of hits obtained by entering the search terms ‘Edi Koblmüller’ and/or ‘Bergspechte’. The action eventually reached the Oberster Gerichtshof (Supreme Court), which referred the following questions to the ECJ for a preliminary ruling:
"1. Must Article 5(1) of the [First Trademarks Directive] be interpreted as meaning that a trademark is used in a manner reserved for the proprietor of the trademark if the trademark or a sign similar to it (such as the word component of a word and figurative trademark) is reserved as a keyword with a search engine operator, and advertising for identical or similar goods or services therefore appears on the screen when the trademark or the sign similar to it is entered as a search term?
2. If the answer to Question 1 is yes:
(A) Is the trademark proprietor's exclusive right infringed by the utilisation of a search term identical with the trademark for an advertisement for identical goods or services, regardless of whether the accessed advertisement appears in the list of hits or in a separate advertising block and whether it is marked as a 'sponsored link'?
(B) In respect of the utilisation of a sign identical with the trademark for similar goods or services, or the utilisation of a sign similar to the trademark for identical or similar goods or services, is the fact that the advertisement is marked as a 'sponsored link' and/or appears not in the list of hits, but in a separate advertising block, sufficient to exclude any likelihood of confusion?"
The ECJ ruled that Article 5(1) of the First Trademarks Directive (89/104/EEC) must be interpreted as meaning that:
"the proprietor of a trademark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with, or similar to, that trademark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trademark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party."
This ruling relates only to the first referred question, since the ECJ concluded that an answer to the second would not be useful for resolving the underlying dispute. The ECJ's position is unsurprising in light of its ruling in Google, which it cites as authority. One might even note the similarity between the two rulings.
This reference was not even given the dignity of an advocate general's opinion - a sure sign that the ECJ did not think that it was a very hard case to resolve.
Jeremy Phillips, IP consultant to Olswang LLP, London

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