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

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

Screen scraping flight schedule not infringing copyrighted database

The Higher Regional Court of Frankfurt has decided, that using a method called “screen scraping” to refer customers to buy airline tickets online is legal and does not infringe copyrights.

The claimant operates a website where users can search for flights. Based on these search queries, flight schedules on (airline) websites are being searched by a spidering tool to retrieve matching flights. Relevant results (including price) are then displayed back on the claimant’s website, whereby the Internet user has the opportunity to book flights. The defendant stated that this practice was unlawful, especially infringing their copyrighted database.

The court has decided that “screen scraping” did not infringe the defendant’s copyrights. Data records of single flight connections can not be deemed as “essential parts” of the database. The screen scraping process is not a duplication or use pursuant to Art. 87b (1) Copyright Act.

The court further reasons, that the screen scraping still was within the limits of normal analysis and that the defendant’s interests were not unreasonably interfered with.

(Higher Regional Court Frankfurt/ Main, 05. March 2009 -  6 U 221/08 )

I think one should be careful here. It would be hazardous to take this decision as a free ride to harvest web sites on the Internet. Slight differences in the scraping process or monetizing model might as well have led to a different outcome.

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June 24, 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

Five Signs Of Internet Auctions Selling Counterfeit Products

German consumers are very price conscious bargain hunters. Several Internet auction platforms are catering to this target audience. The platform with the biggest market share unsurprisingly is eBay.

It is also common place that these platforms are home to a huge number of “pirates” selling counterfeit goods. This poses a big threat to proprietors of trademarks and design patents. There is a direct financial loss involved. But what is probably worse, it dilutes the brand image.

The first step to fight this is to identify internet auctions featuring counterfeit goods. The following five signs are certainly not a 100% indicator. However the more boxes an internet auction ticks, the more further action might be appropriate, e.g. a couvert purchase to investigate further.

  1. Goods only up for auction for a short period of time at an unrealistically low price
  2. Several auctions with the same offer/ sales copy
  3. Substantial number of goods in stock/ on auction
  4. Does not show any seller details or imprint although auction clearly appears to be of commercial nature
  5. Relatively newly registered account and/ or a low number of feed back.
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June 5, 2009   No Comments

International Aspects of Intellectual Property Law, Part I

One of the most fascinating and challenging areas of the law (I find) are cases where more than one jurisdiction is involved. Since the dawn of the Internet international aspects of the law have become relevant even to small businesses and individual consumers to an extent unprecedented so far. This development is even more true in the field of intellectual property. Infringements can easily spread over the Internet within no time, literally all over the world, involving multiple jurisdictions.

This mini series will cover some of the most essential international aspects of intellectual property law from the German and European point of view.

Inter European cases of infringement
In cases where plaintiff and defendant are domiciled in (different) member states of the EU (except Denmark), jurisdiction is determined pursuant to Council Regulation (EC) No 44/2001.

The general rule is that a person shall be sued in the member state of that person’s domicile. There are several exceptions to this general rule. The most relevant one in infringement cases is in regards to torts. A person may also be sued where the harmful event occurred or may occur. Due to the “virtual” nature of intellectual property, place of action (where the infringing action is happening) and place of effect (where the damage actually occurs) are identical.

Whether an event was harmful and therefore constitutes jurisdiction of a member state, is determined by the relevant laws of that member state (e.g. Trademark Act, Copyright Act).

To be continued.

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June 1, 2009   No Comments

Trademark infringement under German law

The following article briefly outlines how a trademark infringement is determined under German law pursuant to Sec. 14 Trademark Act.

A protected sign has been used by a third party without consent in the course of trade.

The  infringement may happen in one of the following three ways:

Infringement of identity. The used sign is identical to the protected sign and it is being used for goods/ services in identical categories. These are typically cases of “Product Piracy”.

Likelihood of confusion. A similar sign is infringing a protected sign if there is a likelihood of confusion. The likelihood of confusion is determined by three aspects:
- Similarity of signs
- Similarity of related goods/ services
- Distinctiveness of protected sign.

Last but not least exploitation of a popular sign. This is the case where a similar sign is taking unfair advantage of a protected sign’s reputation or damaging this signs reputation. A sign is deemed as popular if it is renowned amongst 20 – 30% of the relevant circles in Germany.

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May 26, 2009   No Comments

Using Third Party Trademarks as Metatags

A bit of a golden oldie, but certainly worth another look again, especially in the face of the more recent developments in terms of using trademarked keywords in paid search results (Google AdWords), already discussed here and here.

In its so called “Impuls III” – decision (18. May 2006 – I ZR 183/03) the German Federal Court of Justice has decided, that the unauthorised use of third party signs in the source code of a website is relevant as infringement under the German Trademark Act, even if these signs are imperceptible (to the human eye).

This is no different in cases where such signs are being incorporated in the actual text of a website (be it in very small fonts or font colours matching the background colour). The principle of Exhaustion (Sec. 24 Trademark Act) does only allow such use, if  the specific original product is being promoted. German Federal Court of Justice, “AIDOL” – decision, (8. Feb. 2007 – I ZR 77/04). A similar line-up of font matching is discussed here by Martin Schwimmer in his very comprehensive Trademark Blog (US law).

Based on this, the recent development as to how the Federal Court of Justice is judging third party keywords in paid for search results,  appears a bit surprising at first sight. It seems that in the opinion of the court one of the key differentiators between meta tagging cases and AdWords cases is the “likelihood of confusion”, which isn’t seen as an issue in paid for search results as long as they are distinct from organic results. Hence, the court stresses segregation of paid for search results from organic search results and labelling paid for search results as advertisement (see here and here again).

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May 18, 2009   No Comments

France restricting web access for internet pirates

According to Radio France International, the French Parliament yesterday passed a bill that will be signed into law by President Sarkozy shortly, based on which Internet users pirating software or music over the Internet my lose their Internet connection.

Interesting development. Unfortunately the article doesn´t specify, to what extent the Internet connection will be shut down. Will pirates be banned from using the Internet at all, i.e. banned from using the internet? Otherwise they might just register another account with another provider. Also, what is the maximum suspension time? Hopefully I will be able to report some more specific details, soon.

So far, I think this is a strong signal. The question is, if this is going to have an impact other than the message itself. We all know the Internet well enough to predict that the very same people who are targeted here, will very likely and easily find ways to circumvent this ban.

And one thing is for sure: rather sooner than later, this law will be challenged in terms of constitutionality and compliance with EU law. We shall see. I will keep you posted.

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May 14, 2009   No Comments

Your Rights as a Trademark Proprietor under German Law

So, someone is interfering with your trademark. What options does the German law offer to you as a trademark proprietor? Here are the most important ones:

  1. Infringer is enjoined to refrain from infringing actions,
    Sec. 14 (5) and Sec. 15 (4) Trademark Act.
  2. Compensation, in the case of negligent or intentional infringement,
    Sec. 14 (6) and Sec. 15 (5) Trademark Act. Compensation comprises either of actual damages (as to Sec. 249 ff. Civil Code) or adequate licencing fees or release of relevant profits.
  3. Destruction and recall of infringing goods and destruction of equipment predominantly used for unlawfully labelling infringed goods, if considered reasonable, Sec. 18 Trademark Act.
  4. Disclosure, Sec. 19 Trademark Act. This is predominantly a claim for information like manufacturers, distributors and related details.

According to Sec. 2 Trademark Act, one is not limited to the options granted by the Trademark Act itself. This means, depending on the individual characteristics of a case, claims may also be based on the Civil Code (esp. Sec. 12, 812 and 823 Civil Code) and Act Against Unfair Competition, UWG (esp. Sec. 8,9 and 10).

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May 13, 2009   No Comments