The Quick and Easy Guide to German and EU Intellectual Property Law, Trademarks and Copyright
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Category — International

Google AdWords – Advocate General’s Opinion

I have recently posted a comment about the Advocate General’s Opinion in relation to Google AdWords.

There is an excellent summary of the opinion here on Shireen Smith’s blog ip-brands.com.

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October 11, 2009   No Comments

Google AdWords – Advocate General’s Opinion

There are some news in regards to cases involving the question whether the use of trademarked keywords in Google AdWords constitutes a trademark infringement. The Advocate General Poiares Maduro has delivered his opinion on the joined cases C‑236/08, C‑237/08 and C‑238/08 involving Google (France), Viaticum Luteciel, CNRRH and others, previously ruled by the French Cour de Cassation.

This opinion is not to be confused with a judgement of the European Court of Justice (ECJ) nor is it in any way binding for the ECJ. But still – it is a first outlook on possible further developments, especially as there are also other similar cases (see also my earlier Google related posts here, here and here) pending with the ECJ.

The opinion is clearly guided by the principle that “…. it is important not to allow the legitimate purpose of preventing certain trade mark infringements to lead all trade mark uses to be prohibited in the context of cyberspace…”. The Advocate General also emphasises that “…it is not the use in ads, or on the sites advertised, that is the subject…” of his opinion.

In brief, the Advocate General concludes that the use of trademarked keywords by Google in its AdWords system (the selection process) does not constitute a trademark infringement. Trademark proprietors are referred to intervene “…when the ads are displayed to Internet users…”.

The opinion draws the following key conclusions:

1. The mere selection of a trademarked keyword in Google AdWords or a similar paid Internet referencing service without the trademark proprietor’s consent does not constitute a trademark infringement. Advertisers are not acting in the course of trade when selecting keywords because they are being sold these keywords by Google in relation to the AdWords service. Thereby the advertisers are acting as mere consumers which is private use.

2. A trademark proprietor may not prevent a provider of such services from making available keywords reproducing registered trademarks based on Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation (EC) No 40/94 as AdWords is not identical or similar to those covered by the trade marks.
More clearly the Advocate General rejects “…. the notion that the act of contributing to a trade mark infringement by a third party, whether actual or potential, should constitute an infringement in itself…”, arguing that otherwise newspapers would have to be prohibited as they could potentially be abused by third parties to infringe trademarks as well.

3. Neither may a proprietor of a trademark with a reputation prevent such keyword use based on Article 5(2) of Directive 89/104 and Article 9(1)(c) of Regulation No 40/94 as the other functions of the trade mark (e.g. guaranteeing the quality of goods, communication etc.) should not be considered to be affected as the Advocate General puts it. This conclusion seems vastly result oriented, based on the concern that “… if trade mark proprietors were to be allowed to prevent those uses on the basis of trade mark protection, they would establish an absolute right of control over the use of their trade marks as keywords. Such an absolute right of control would cover, de facto, whatever could be shown and said in cyberspace with respect to the good or service associated with the trade mark…”.

4. Paid Internet referencing services are no information society services consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/EC. This means Google would not be exempt from liability under national law for featuring content constituting trade mark infringements. The argument is based on the aim of Directive 2003/31 which is to ensure the Internet as a free and open public domain. The Directive aims to achieve this by limiting the liability of those transmitting or storing information.  The Advocate General however argues, that the content featured in Google AdWords (the ads actually displayed) does not deserve this kind of protection as it originates from Google’s relationship with the advertisers and thus AdWords is not a neutral information vehicle.

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September 27, 2009   1 Comment

K-Swiss vs Puma

As the German business magazine Wirtschaftswoche reports in its online issue, the German sporting goods manufacturer Puma is facing a battle in the US over its trademarked “form strip”, a bended leather strip. One of Puma’s competitors, K-Swiss, claims that Puma’s trademark application with the US Trademark and Patent Office was erroneous.

K-Swiss argues that Puma had deliberately given false information when filing their trademark application. Allegedly the German entity (Puma AG) misrepresented that its North American entity, Puma North America, is co-proprietor of the trademark, by declaring Puma North America to be the only one having any rights to this mark.

Wirtschaftswoche states that the background of this matter is an ongoing dispute between the two companies in which Puma alleges K-Swiss to use a leather strip on one of its shoes similar to Puma’s formstrip.

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August 31, 2009   No Comments

State emblems as trade marks – an almost impossible transformation

In this case the European Court of Justice (ECJ) had to decide about the registration of a State emblem (the Canadian maple leave emblem) as a Community trade mark. The underlying question was what scope of protection provided by Art. 6ter of the Paris Convention to State emblems and whether this Article also applies to service marks.

The Belgian company “American Clothing Associates” had filed an application for a Community trade mark (Nice Classes 18, 25 and 40). The sign in question was representing a maple leaf with the letters “RW” beneath it. The application was rejected based on Article 7(1) of Council Regulation (EC) No 40/94 establishing an absolute ground for refusal in regards to registration of State emblems in conjunction with Article 6ter of the Paris Convention.

American Clothing Associates filed action with the Court of First Instance but wasn’t successful. Finally, American Clothing Associates filed an appeal with the ECJ on the grounds that the Court of First Instance didn’t apply Article 7(1)(h) of Regulation No 40/94 and Article 6ter(1)(a) of the Paris Convention properly mainly due to a misinterpretation of the relevance of the essential function of State emblems.

American Clothing Associates argued that the scope of protection of Article 6ter (1)(a) of the Paris Convention is only to protect State emblems from imitations in a heraldic sense. Not the symbol itself is protected but the specific graphic work. Thus emblems without heraldic characteristics are not covered by the scope of Article 6ter (1)(a) of the Paris Convention.

The ECJ dismissed the appeal brought by American Clothing Associates. This was mainly based on the finding that the scope of protection of Article 6ter of the Paris Convention is absolute and “… does not depend on whether the emblem imitated in a trade mark is perceived by the public as a distinctive element or an ornamental element …”. The court further reasons that the essential functions of trademarks and State emblems are different in that State emblems are meant to identify a State and represent its sovereignty whereas trademarks are a means to identify the origination of goods and services. Further on the protection of State emblems does not require a likelihood of confusion. State emblems cannot be declared invalid, their protection period is not limited and they are protected without the need for registration.

The court also concludes that Article 6ter of the Paris Convention may even be applicable in cases where the mark is not an exact reproduction of a State emblem  if a trade mark is perceived by the relevant public as an imitation of a State emblem.

Finally the court ruled that the Paris Convention does not require States to distinguish between trademarks for goods and services although States are free to do so. The court outlines that based on Article 29(1) of Regulation No 40/94 it is evident that the Community legislature did not intend to discriminate between marks for goods and marks for services.

(European Court of Justice, Cases C‑202/08 P and C‑208/08 P, 16 Jul 2009)

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July 23, 2009   No Comments

Procter & Gamble’s OLAY no likelihood of confusion with OLI

In this decision the Court of First Instance had to decide the case of the Spanish company Laboratorios Alcala Farma who had filed an application for a Community trade mark in regards to the figurative sign “Oli” for the Nice Classes 3 and 5.

Procter & Gamble had filed an opposition claiming infringement of their earlier “OLAY” Community word marks (Nice Classes 3 and 5) because of a likelihood of confusion.

The court dismissed Procter & Gamble’s action. In essence because “…the signs at issue have significant differences at a visual and aural level which override the similarities…” in parts because of the figurative, highly stylised appearance of the “Oli” sign. But also the difference in pronunciation was highlighted by the court.

Finally the court emphasises that in regards to medical goods there was no likelihood of confusion as consumers display a higher level of attention when purchasing such goods.

No real groundbreaking new legal developments here.

(European Court of First Instance T‑240/08, 8 Jul 2009)

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July 10, 2009   1 Comment

The OHIM and Dr. No

In the Case T‑435/05 decided by the European Court of First Instance on the 30th June 2009, Danjaq LLC, a US company established in Santa Monica, California was objecting the registration of the word sign “Dr. No” as Community trade mark at the OHIM by the German company Mission Productions Gesellschaft für Film-, Fernseh- und Veranstaltungsproduktion mbH (in the following referred to as “Mission Production”).

Registration was sought for Nice Classes 9, 12, 18, 25 and 32.

The OHIM rejected Danjaq´s objection on the grounds that

  • they had not provided sufficient proof that the marks in question had a well‑known character or
  • that the non‑registered marks or the signs other than trade marks had previously been used in the course of trade.

Danjaq LLC based their legal action on the following grounds:

  1. Infringement of Article 8(1)(a) and (b) and (2)(c) of Regulation No 40/94 (identity and likelihood of confusion)
  2. Infringement of Article 73 of Regulation No 40/94, and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95 (OHIM’s obligation to state reasons on which a decision is based).
  3. Infringement of Article 8(4) of Regulation No 40/94 (proprietor of non-registered trademark’s right to prohibit use of subsequent trademark)

The court has declined all three pleas.

1. The court ruled that there was no infringement of Article 8(1)(a) and (b) and (2)(c) of Regulation No 40/94 as the signs “Dr. No” and “Dr. NO” were not used by Danjaq LLC as trade marks previously. The court considers “Dr. No” as the title of the first film in the “James Bond” series and the name of one of the main character in that film. The signs “Dr. No” and “Dr. NO” were however not used as trade marks in order to identify the commercial origin of the films or DVDs.

For the average consumer, these signs only help to distinguish that film from other films in the “James Bond” series. The commercial origin of the film is indicated by other signs (e.g. “007″, “James Bond” or the “Gun Symbol”).

The court further reasons that even the commercial success of the Bond film “Dr No” can not change the fact that the signs in questions are not being used as indicators of commercial origin.

2. The court ruled that there was no infringement of Article 73 of Regulation No 40/94 and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95 as Danjaq LLC had failed to prove that it had used the signs “Dr. No” and “Dr. NO” in the course of trade. This is sufficient ground on which OHIM could reject the plea without violating Article 73 of Regulation No 40/94 and of Rules 50(2)(f) and 52(1) of Commission Regulation (EC) No 2868/95.

3. Finally the court ruled that there was no infringement of Article 8(4) of Regulation No 40/94 as Danjaq LLC had failed to prove that it had used the signs “Dr. No” and “Dr. NO” in the course of trade. Pursuant to Article 8(4) of Regulation No 40/94, the existence of an earlier non‑registered trade mark or a sign other than a trade mark gives its proprietor the right to prohibit the use of a subsequent trade mark if the sign

- is used in the course of trade and
- is of more than mere local significance.

The court reasons that “…the condition requiring use in the course of trade is a fundamental requirement, without which the sign in question cannot enjoy any protection against the registration of a Community trade mark, irrespective of the requirements to be met under national law in order to acquire exclusive rights…”

The documents submitted by Danjaq LLC were not sufficient proof that the film title “Dr No” was used in the course of trade as Danjaq LLC did not specify the extent of use of the title in the markets concerned. The court would have regarded “… programming details of the film, either for cinemas or television, or to specify the length of time over which the film was distributed …” as sufficient proof.

(European Court of First Instance T‑435/05, 30 June 2009)

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July 6, 2009   No Comments

L’Oréal vs. Bellure

The European Court of Justice (ECJ) had to decide in a case where the defendant (Bellure) was marketing imitations of the claimant’s (L’Oréal) fragrances whereby packaging and bottles were being generally similar however this similarity was unlikely to mislead professionals or the public. Further on the defendant was marketing these imitations by using L’Oréal´s wordmarks in a comparison price list.

One of the key questions the court answered (in the negative), was whether the applicability of Directive 89/104/EEC (to approximate the laws of the Member States relating to trade marks) and of Directive 84/450/EEC (concerning misleading and comparative advertising, amended by Directive 97/55/EC) requires a likelihood of confusion.

The taking of unfair advantage of the distinctive character or the repute of a mark pursuant to Article 5(2) of Directive 89/104/EEC does not require a likelihood of confusion or detriment to the distinctive character or the repute of the mark.

The unfairness of the use of a trademark arises where a third party seeks

  • to ride on the coat-tails of the mark with a reputation and
  • to benefit from the reputation of that mark

and thus is exploiting the proprietor’s marketing efforts without paying any financial compensation.

Under Article 5(1)(a) of Directive 89/104/EEC the proprietor of a registered trade mark has the right to ban a third party from using that trademark in a comparative advertisement not compliant with the requirements as per Article 3a(1) of Directive 84/450/EEC (concerning misleading and comparative advertising, amended by Directive 97/55/EC) even if such use does not jeopardise the essential function of the mark (indicating the origin of the goods or services) if it affects one of the other functions of the mark and by that going beyond a mere descriptive use. These complimentary functions are in particular:

  • communication
  • investment
  • advertising.

The court sees the way in which L’Oréal’s wordmarks were being used by the defendant in the price lists as more than a mere descriptive comparison. In fact the price lists in this case are classified by the court as a means of advertising.

An advertiser who states explicitly or implicitly in comparative advertising that the product marketed by him is an imitation of a product bearing a well-known trade mark unlawfully presents “goods or services as imitations or replicas” within the meaning of Article 3a(1)(h) of Directive 84/450 (amended by Directive 97/55) and advantages gained as a result of such unlawful comparative advertising are thus taken unfairly of the reputation of that mark pursuant to Article 3a(1)(g) of Directive 84/450.

It has to be noted that on the 27. November 2008, Directive 89/104/EEC has been replaced by Directive 2008/95/EC. However regarding the date of the case’s facts in the main proceedings, this case still had to be decided applying Directive 89/104/EEC.

European Court of Justice (C-487/07 – 18. June 2009)

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June 22, 2009   No Comments

Wordmark “CK” – Calvin Klein vs. Creationes Kennya

There is no similarity or likelihood of confusion between the trademark “ck creationes kennya” and the older community trademark “ck calvin klein”.

Pursuant to Art. 8 Para. 1 lit. b Council Regulation(EC) No. 40/94 a trademark can not be registered if

  • the proprietor of an older trademark objects and
  • the new mark is identical or similar to the older trademark and
  • the trademarks are related to identical or similar goods or services and
  • this causes a likelihood of confusion within the relevant public circles.

When comparing compound trademarks, it is not sufficient to compare components separately. In fact it is required to compare the trademarks in their entireness.

The mere similarity between the dominating element “ck” of the older trademark “ck calvin klein” (being registered in a way where “ck” is printed in significantly bigger fonts than “calvin klein”)  and the element “ck” of “ck creaciones kennya” does not cause a likelihood of confusion as the latter is dominated by “creaciones kennya” and not by “ck”.

European Court of First Instance (T-185/07, 7th May 2009)

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June 15, 2009   No Comments

International Aspects of Intellectual Property Law, Part III

Unlike in tort law, the parties of a contract usually may agree on a certain court of competence of their choice. If the parties are domiciled in different member states of the EU, Council Regulation (EC) No 44/2001 (Art. 23) is applicable.

As already mentioned in part 2, cases where at least one party is domiciled in a non EU country are governed by the Hague Convention on Choice of Court Agreements”.

However there are some exemptions. This convention is not applicable in matters regarding the validity of intellectual property rights other than copyright and related rights. Exempt are also infringements of intellectual property rights other than copyright and related rights, except where infringement proceedings are brought for breach of a contract between the parties relating to such rights, or could have been brought for breach of that contract.

To be continued.

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June 10, 2009   No Comments

International Aspects of Intellectual Property Law, Part II

In part 1 of this mini series I covered inter European cases. In this part we´re having a closer look at cases linked to non EU jurisdictions.

Unfortunately, in many international cases related to international property infringement there is no matching international legal framework comparable to Council Regulation (EC) No 44/2001.

The only significant framework here is the Hague Convention on “Choice of Court Agreements” regulating court competence in cases where the parties have (contractually) agreed to chose a certain court. However this convention is not applicable to those instances of intellectual property infringements where there is no contractual relationship between the parties.

To be continued.

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June 8, 2009   No Comments