Keyword advertiser liable for trademark infringement

Ruling for the second time on the issue of keyword advertising, the Austrian Supreme Court has held that, in the case at hand, keying constituted trademark infringement (Case 17 Ob 1/07 g, March 20 2007).

The court previously held that Google Österreich, as the provider of the keying service, was not liable for trademark infringement (Case 4 Ob 194/05s, December 19 2005).

In the present case, the owner of the well-known Austrian trademark WEIN & CO, which operates an online wine store at www.weinco.at, filed a trademark infringement action against the operator of the online wine store www.weinwelt.at. Under an agreement with Google, a link to the defendant's online wine store appeared under the title 'Wein & Co' in a light-blue box at the top of the result page for the search term 'Wein & Co'.

The Austrian Supreme Court upheld the trademark infringement claim, finding that using the claimant's mark as a title above the defendant's sponsored link created a likelihood of confusion. The court also held that listing the defendant's website before that of the claimant on the result page for a search for 'Wein & Co' also created a likelihood of confusion.

However, the court did not clarify two important issues, namely:

• whether a sponsored link appearing on the right-hand side of the result page, in a box clearly labelled 'sponsored links', would lead to a finding of trademark infringement; and
  
  
• whether a finding of trademark infringement would be made if the mark owner's website was the first to appear on the left-hand side of the result page.

Angela Heffermann, Sattler & Schanda Rechtsanwälte, Vienna