In Wintersteiger AG v Products 4U Sondermaschinenbau GmbH C-523/10 (Opinion of Advocate General) 16 February 2012, Advocate General Pedro Cruz Villalón considered that the proprietor of a national trade mark may be able to bring an infringement action in the Member State of registration against a third party that has registered a keyword used on a national search engine that is identical to the mark. This right was upheld even where the keyword is limited to searches carried out via the top-level domain for another Member State.
Wintersteiger AG is an Austrian company that manufactures and distributes ski and snowboard servicing tools. It has held a national trade mark registration for WINTERSTEIGER in Austria since 1993. Products 4U, is established in Germany, where it develops and distributes worldwide ski and snowboard servicing tools. It sells, amongst other products, accessories for the tools manufactured by Wintersteiger, although Wintersteiger does not supply its products to Products 4U.
Products 4U purchased the word “Wintersteiger” as a keyword used on a German search engine, i.e. a search engine for the top level domain “.de”, which can be accessed in Austria. When an internet user searches for “Wintersteiger” on the German search engine, this keyword generates a sponsored link directing the user to a section of the Products 4U website entitled “Wintersteiger Accessories”.
Wintersteiger sought to prevent the use of the keyword by way of an injunction in the Austrian courts, on the basis that it infringed Wintersteiger’s rights in its Austrian trade mark.
The Austrian Supreme Court referred the case to the Court of Justice for the European Union (CJEU) for guidance on Article 5(3) of the Brussels Regulation (44/2001/EC) as to whether it had jurisdiction to consider the case.
THE OPINION OF THE ADVOCATE GENERAL
The AG was careful to emphasise that the questions before him related to whether the Austrian court had jurisdiction to consider infringement and not whether infringement had actually occurred. He considered that the task before the Austrian court was to establish whether the “means necessary” to produce an actual infringement of the trade mark were used by the purchaser of the keyword, i.e., Products 4U. If this was the case, Article 5(3) of the Brussels Regulation would grant jurisdiction to the courts for the place in which the event giving rise to the damage took place, i.e., Germany, and also for the place where the damage actually occurred, i.e., Austria.
On this basis, the Advocate General turned to the appropriate criteria for establishing the means necessary. These included the territorial scope of both parties’ businesses, whether the search engine could be accessed in Austria, whether it was in the same language, and the presentation of the advertisement itself. In particular, the fact the keyword “Wintersteiger” included a link that took the user directly to Products 4U’s website, without any reference to the fact that it is a national trade mark linked to an Austrian undertaking, was likely to contribute to the user (who may be accessing a German search engine ending with “.de” in Austria without any restriction), confusing the two companies, which are competitors on the EU internal market.
In conclusion, the AG’s opinion was that the response to the Austrian court should be that where conduct that is liable to infringe a national trade mark occurs via the internet, Article 5(3) must be interpreted as meaning that it attributes jurisdiction both “to the courts of the Member State in which the trade mark is registered and to the courts of the Member State where the means necessary to produce an actual infringement of a trade mark registered in another Member State are used”.
If the CJEU opts to follow the AG’s opinion, this decision may lead to a situation in which competitors purchasing keywords in one Member State become subject to foreign proceedings in another. However, in setting out the criteria for the “means necessary”, the AG’s assessment gave significant weight to the content of the advertisement, effectively applying the established substantive test of whether the advertisement generated enables normally-informed and reasonably-attentive internet users to ascertain whether the goods referred to by the advert originate from the proprietor. The CJEU may take the view that it does not, and as such there is no potential for infringement. The fact that the German search engine ending with “.de” is accessible in Austria would then be irrelevant.