Supreme Court advised to refer questions to ECJ in keying case

In Portakabin Ltd v Primakabin (Case C07/056HR; LJN: BF0518, September 12 2008), DWF Verkade, the advocate general to the Dutch Supreme Court, has issued a lengthy opinion advising the court to refer several questions to the European Court of Justice (ECJ) for a preliminary ruling.
Portakabin Ltd, a major manufacturer of modular building units, sells its goods under the trademark PORTAKABIN. Primakabin BV sells new and used modular building units under the trademark PRIMAKABIN. It also sells second-hand Portakabin units.
Primakabin purchased an ad on Google's Adwords system that was keyed to the search term 'portakabin' and misspellings of 'portakabin' (eg, 'portacabin', 'portokabin' and 'portocabin'). A search on these keywords led to an advertisement for Primakabin, which was linked to Primakabin's website.
Portakabin sued Primakabin for infringement of its registered trademark PORTAKABIN.
Portakabin was unsuccessful in summary proceedings. The Amsterdam courts of first and second instance found that:
  • use of the PORTAKABIN mark as a keyword did not constitute use as a trademark; and
  • Primakabin did not take unfair advantage of the reputation of the PORTAKABIN mark. 
On the merits, the Court of First Instance of The Hague found in favour of Portakabin (Case 9-1-2008 BIE 2008), holding that:
  • use of the PORTAKABIN mark as a keyword constituted trademark use; and 
  • such use could be opposed by the trademark owner.
Verkade's opinion concerned the summary proceedings. Even though the Austrian Supreme Court (Case GRUR Int 2008/6) and the French Supreme Court have already referred questions to the ECJ for a preliminary ruling in similar cases (for further details please see "Supreme Court refers questions on keying to ECJ" and "More questions referred to the ECJ in Google Cases"), Verkade recommended that the Dutch Supreme Court also refer questions to the ECJ on the use of trademarks as keywords in the Adwords system.
Verkade's opinion shows the significance of this issue from a trademark perspective. Verkade formulated 10 questions, each divided into sub-questions. Therefore, a total of 24 questions are likely to be referred to the ECJ. The questions cover all possible implications of the use of trademarks as keywords (eg, cases where the trademark alludes to a quality of the product and where the Adwords user also sells the trademark owner's goods). The ECJ is likely to deal with all questions at the same time.
Paul Steinhauser, SteinhauserHeeziusRijsdijk Advocaten, Amsterdam

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