Following on the Louis Vuitton case, in Portakabin Ltd and another v Primakabin BV, (Case C-558/08), the ECJ has provided further useful guidance relating to the use of competitor’s keywords, in a judgment which further emphasises the need for internet advertisers who use competitors’ trade marks as keywords, to make it clear that the advertised goods or services are not associated with the competitor.
Portakabin is the proprietor of the trade mark PORTAKABIN. Primakabin chose as Google AdWords the keywords “portakabin”, “portacabin”, “portokabin” and “portocabin”, the last three variations being chosen to pick up typical misspellings of “portakabin”.
Portakabin’s action against Primakabin was referred to the ECJ, which held as follows.
- Use of an AdWord or other keyword is in the course of trade in relation to the goods and services of the advertiser.
However, as held in the L’Oreal case, such use will only constitute trade mark infringement where that advertising does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to originate from the proprietor of the trade mark or from an undertaking economically linked to it or, on the contrary, originate from a third party.
This would also be the case where the advertisement, while not suggesting the existence of an economic link, is vague to such an extent on the origin of the relevant goods or services that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and its commercial message, whether the advertiser is a third party or economically linked to the trade mark proprietor.
In such a case advertisers cannot, in general, rely on the defence that the keyword describes the characteristics of the goods or services or is necessary to indicate the intended purpose of a product or service, even if this is use which could be regarded as having been made in accordance with honest practices in industrial or commercial matters.
- Use of a keyword in relation to the resale of goods manufactured and placed on the market in the European Economic Area by a trade mark proprietor or with his consent, will not infringe, unless there is a legitimate reason which justifies the proprietor in opposing that advertising, such as use of that sign which gives the impression that the reseller and the trade mark proprietor are economically linked or use which is seriously detrimental to the reputation of the mark. The ECJ further held that:
- there will be no such legitimate reason simply where the advertiser uses another person’s trade mark with additional wording indicating that the goods in question are being resold, such as “used” or “second-hand”;
- there will be such a legitimate reason where the reseller, without the consent of the proprietor, has in the context of advertising for its resale activities, removed reference to that trade mark from the goods and replaced it with a label bearing the reseller’s name, thereby concealing the trade mark; and
- there will be no such legitimate reason where the reseller’s activities also include the sale of other second-hand goods, unless the sale of those other goods, in the light of their volume, their presentation or their poor quality, risks seriously damaging the image which the proprietor has succeeded in creating for its mark.
The ECJ also held the following:
- for purposes of determining whether a keyword infringes a trade mark, it is not necessary to determine whether the goods or services referred to by the advertisement are actually offered for sale in its wording or whether they are offered for sale only on the advertiser’s website to which advertisement links; and
- if the keywords which reproduce a trade mark with “minor spelling mistakes” contain differences which are so insignificant that they may go unnoticed by the average consumer, they may be regarded as identical to the trade mark. Otherwise they will be regarded as similar to the mark and it will additionally be necessary for the proprietor to prove a likelihood of confusion (eg where the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings).