CJEU rules on paid referencing of trade mark on search engine website

May 15, 2023

 The Court of Justice of the European Union has ruled in the case of Lännen
MCE Oy v Berky GmbH and Senwatec GmbH & Co KG (Case C-104/22)

Article 125(5) of the Trade Mark Regulation (2017/1001/EU) provides that an EU trade mark owner can bring EUTM infringement actions in a member state “in which the act of infringement has been committed or threatened”.

A Finnish company called Lännen argued that two German companies (Senwatec and Berky) had infringed its EUTM WATERMASTER in Finland. When people searched for “Watermaster” on www.google.fi, a Google Adwords advertisement for Senwatec’s products was displayed; and there were links to a page with images of Berky machines as an organic search result. Lännen argued that the advertising at issue, which was in English, was addressed to an international public, and aimed at every country in which it is visible. Senwatec and Berky challenged the Finnish court’s jurisdiction, arguing that their marketing activities were not targeted at Finland because they did not offer their products for sale there. The Finnish courts referred the case to the CJEU.

The CJEU ruled that Article 125(5) of the Trade Mark Regulation means that the proprietor of an EU trade mark who considers that the have been prejudiced by the use, without their consent, by a third party, of a sign identical with that mark in online advertisements and offers for sale in respect of goods identical with, or similar to, those for which that mark is registered, may bring an infringement action against that third party before an EU trade mark court of the member state in which consumers and traders targeted by those advertisements or offers for sale are located.

This applies even if the third party does not expressly and unambiguously list that member state among the territories to which a supply of the goods in question might be made, if that third party has made use of that sign by means of paid referencing on a search engine website which uses a national top-level domain name of that member state.

The court also points out that this does not apply simply because the third party concerned has used the natural referencing of images of its goods on an online photo-sharing service under the generic top-level domain, having recourse to meta tags using the trade mark concerned as a keyword.