Adwords and Keywords: Off to the ECJ

January 23, 2009

In what might even be a co-ordinated response, the German Supreme Court (the BGH) and the Dutch Supreme Court have referred issues surrounding the use of keywords sold by a search engine where the keyword (or adword) is alleged to breach the rights of others, trademark holders and the like.

Law-Now from CMS Cameron McKenna reports that, in December, the Dutch Supreme Court decided that it needed the guidance of the ECJ in a case brought by Portakabin for trade mark infringement against Primakabin, which re-sells second-hand Portakabin products.  The alleged trade mark infringement involved Primakabin’s registration of PORTAKABIN (a trade mark owned by its competitor), and mis-spelt versions of the same, as a keyword with several search engines.  Searches for these words generated sponsored links to Primakabin’s website.

The ever reliable IPKat ( reported yesterday on the anticipated decision from the BGH, translating the BGH press release but not yet having had access to the judgment itself. The IPKat’s summary states that, of the three cases decided by the BGH, it has denied trade mark infringement in two of the cases and referred the third matter to the ECJ. The case referred to the ECJ involved bananabay. According to the IPKat: ‘The claimant and the defendant both sold adult entertainment products. The claimant is the proprietor of a trade mark registration for “bananabay” and sought to stop its competitor’s use of the trade mark as a keyword/AdWord on the competitor’s website, claiming trade mark infringement and seeking damages. The BGH decided that, in cases where another party’s trade mark was used as a keyword/Adword on goods/services that are identical to the goods/services protected by that trade mark, it needed to clarify whether such use was “use as a trade mark” and could constitute trade mark infringement. Given that the relevant infringement provisions in the German trade mark are based on harmonised European law, the court decided to suspend the proceedings and refer this question to the ECJ under Article 234 EC-Treaty’.