Act III in Google AdWords: today’s Court of Justice rulings

The Court of Justice has today upheld its third decision about Google Adwords system (case C-558/08). The request of preliminary ruling originated this time from the Netherlands. Also, this time the action was not directed against Google.

So what was the situation involved?

google balance

Portakabin Ltd, owner of Benelux trademark PORTAKABIN, had initially sought Court order requiring Primakabin to cease the use of the keywords “portakabin”, “portokabin” and “portocabin” which Primakabin has reserved on Google AdWord system given its activities of selling and leasing of new and second hand mobile buildings amongst which were some PORTAKABIN products.

The Courts of the Netherlands all said that use of the keywords “portakabin” and variants thereof by Primakabin was not use within the meaning of EU trademark provisions. The Supreme Court then deferred the matter to the Court of Justice…

No more suspense… what said the CJ? The Court actually first reiterated its position of March 23, 2010, in joint cases C-236/08, C-237/08 and C-238/08: a trademark owner is in position to prohibit advertisers from advertising goods or services identical to those run under the mark through the selection of a keyword identical to said mark and chosen without the consent of said owner. His ability to act is however limited to situations where said advertising does not or hardly allows an average internet user to ascertain that said goods or services originate either from them or from an undertaking economically connected to him or otherwise from a third party…

…This being said, there are new aspects that particularly emerged in today’s decision and which are worth mentioning. First, the Court says that advertisers cannot in general raise the exception of Article 6 of Directive 89/104 (necessary reference to a mark for indicating the intended purpose of a product or a service, in particular as accessories of spare parts) to escape to trademark owners monopoly in the context of signs reserved as keywords in the Google AdWords system.

Second, but this more particularly sticks to the particular circumstances of the case, a trademark owner is not entitled to prohibit advertisers from advertising the resale of goods manufactured and placed on the market in the European Economic Area by the proprietor of with his consent, unless there is a legitimate reason such as an harm to the reputation of the mark or an impression left to the public of an economic link between the owner and the advertiser.

The saga is in move. There are still 3 remaining pending cases for which decisions are yet to come but the direction taken is quite clear overall…

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