Presentation held at the Know Right 2010 conference in Vienna 05.05.2010. Legal analysis of the ECJ' Google France Rulings (23.03.2010, C‑236/08, C‑237/08 and C‑238/08) focusing on trademark law, law of unfair competition and the liability exemption.

1. “It’s the ad-text, stupid ”
Conclusions drawn from the
ECJ’s Google France Rulings
KnowRight 2010, Maximilian Schubert
Vienna, 05.05.2010
1

2. Content
‣ Introduction
‣ Explanation & Differentiation
‣ 2007 - 2010; Any Changes?
‣ Ongoing Legal Discussion
‣ Trademark Use - Art 5
‣ Liability Exemption - Art 14
‣ The Google France Ruling
‣Trademark Issues
‣ Liability Exemption
‣ Summary & Outlook
2

3. Simplified scheme of Search Engine Advertising
User
User enters query:
hotel edinburgh scotsman
846,000
relevant pages Index
Search
engine
(Page) Rank Ranking
Search Engine Results Page (SERP)
3

4. Simplified scheme of Search Engine Advertising
Advertiser books following ‘keywords’
User Advertiser
- hotel
- edinburgh
User enters query: - scotsman
hotel edinburgh scotsman Keyword Options: “broad match”
Local target: Austria, Vienna
Bid: EUR 0,15 per click
846,000
relevant pages Index
Search Ad-
engine Words
(Page) Rank Ranking
Search Engine Results Page (SERP)
3

5. 1. Differentiation: Top-Ad v. Side-Ad
4

6. 1. Differentiation: Top-Ad v. Side-Ad
‣ Top-Ad
4

7. 1. Differentiation: Top-Ad v. Side-Ad
‣ Top-Ad
‣ Side-Ad
4

8. 1. Differentiation: Top-Ad v. Side-Ad
‣ Top-Ad
‣ Side-Ad
‣ “organic” Search Results
4

9. 1. Differentiation: Top-Ad v. Side-Ad
illustrative!
‣ Top-Ad
‣ Side-Ad
‣ “organic” Search Results
Google Golden Triangle - Eyetracking how people view search results I Eyetools
http://eyetools.com/research_google_eyetracking_heatmap.html (18.03.2010).
4

10. 2. Differentiation: Adv- v. Adv+
Does the text-ad bear the protected sign?
No: “Adv-” Yes: “Adv+”
“Adv-” = sign booked as keyword & sign not shown in the text of the ad.
“Adv+” = sign booked as keyword & sign shown in the text of the ad.
5

11. 3. Differentiation: Keyword Options
liberal restrictive
bei Wein & Co Wien
Spirituosen
Keyword
Wein & Co Options
Flaschenwein
billiger Wein
6

12. 3. Differentiation: Keyword Options
high tolerance
ads shown often
‘high’ costs
liberal restrictive
bei Wein & Co Wien
Spirituosen
rd
Wein & Co wo ns
ey tio
K p
O
Flaschenwein
billiger Wein
6

13. 3. Differentiation: Keyword Options
low tolerance
few ads shown
‘low’ costs
liberal restrictive
bei Wein & Co Wien
Spirituosen
Ke
yw
Op or
Wein & Co tio d
ns
Flaschenwein
billiger Wein
6

14. ‘Keyword
Agenda Buying’ v. ‘Keyword Advertising’
Search Engine Marketing Keyword Advertising: Keyword Buying:
Top- & Side Ads Ads in the Search Results
Top-Ad Top-Ad
(organic) (organic) Side- (organic) Side-
Search Results Search Results Ad Search Results Ad
‣ Search Engine Marketing is the umbrella term, also including Search Engine Optimisation.
‣ Keyword Advertising is the display of ads besides the search results. [1]
‣ Keyword Buying is an artificial word-creation in German to distinguish advertising inside
the ‘organic’ search results from regular keyword advertising.
1: Fain/Pedersen, Sponsored Search: a Brief Histroy, http://citeseerx.ist.psu.edu/viewdoc/download?doi=10.1.1.92.987&rep=rep1&type=pdf (29.04.2010).
7

15. Differentiations & terms
‘Top Ad’ v. ‘Side Ad’
‘Adv+’ v. ‘Adv-’
Keyword Options
‘Keyword Buying’ v. ‘Keyword Advertising’
8

16. 2007 - 2010; Any Changes?
‣ Ongoing developments:
‣ Tailored Advertising (Location, Language, etc.)
‣ Personalised Search: Search results influenced by previous searches
(evidence?)
‣ Blacklist for Search Ads (Ads will not show for specific IPs)
‣ Google Suggest (Did you mean?)
‣ Advertising on mobile devices (smaller screens)
‣ Advertising in an augmented reality environment (continuous flow of
information)
‣ A new Google Layout? Universal Search?
9

17. Change:
Agenda e.g. ‘Google Suggest’
‣ Users don’t type in the complete search query as Google already
offers suggestions while the user is typing.
10

18. Change:
Agenda e.g. “Google Suggest”
‣ The “Google Suggest” function can lead to a significant shift in demand.
“Grunderwerbsteuer”: real estate transfer tax
[Stefens, Google Suggest rulez the SERP, http://seo.de/2253/google-suggest-rulez-the-serps/ (22.02.2010)]
11

19. Change:
Agenda e.g. “Google Suggest”
‣ The “Google Suggest” ... a way of addressing customers even before
they have fully articulated what they are actually searching for?
12

20. Change:
Agenda e.g. “Google Suggest”
‣ The “Google Suggest” ... a way of addressing customers even before
they have fully articulated what they are actually searching for?
13

21. Content
‣ Introduction
‣ Explanation & Differentiation
‣ 2007 - 2010; Any Changes?
‣ Ongoing Legal Discussion
‣ Trademark Use - Art 5
‣ Liability Exemption Art 14
‣ The Google France Ruling
‣Trademark Issues
‣ Liability Exemption
‣ Summary & Outlook
14

22. Art 5 (1) Directive 89/104/EEC (‘Trademark Dir’) - Basics
The proprietor shall be entitled to prevent all third parties not
having his consent from using in the course of trade:
(a) any sign which is identical with the trade mark in relation
to goods or services which are identical with those for which
the trade mark is registered;
(b) any sign where, because of its identity with, or similarity
to, the trade mark and the identity or similarity of the goods
or services covered by the trade mark and the sign, there
exists a likelihood of confusion on the part of the public,
which includes the likelihood of association between the sign
and the trade mark.
Art 5 (1) Directive 89/104/EEC
15

23. Art 5 (1) Directive 89/104/EEC - Basics
The proprietor is entitled to prevent all third parties not having his
consent from using any sign in the course of trade if:
lit a. identical + identical = !
lit b. identical
/similar
sign
+ identical
/similar
goods
+ likeliness of
confusion = !
Art 5 (1) Directive 89/104/EEC
16

24. Art 14 Directive 2000/31/EC - Liability Exemption
‘Hosting’ 1. Where an information society service is provided
that consists of the storage of information provided by a
recipient of the service, [...] the service provider is not liable
for the information stored at the request of a recipient of the
service, on condition that:
(a) the provider does not have actual knowledge of illegal
activity or information and, as regards claims for damages, is
not aware of facts or circumstances from which the illegal
activity or information is apparent; or
(b) the provider, upon obtaining such knowledge or
awareness, acts expeditiously to remove or to disable access
to the information.
Art 14 Directive 2000/31/EC
17

25. Art 14 Directive 2000/31/EC - Liability Exemption
The service provider is not liable for the information stored at
the request of a recipient of the if:
‣ No actual knowledge of illegal activity
‣ Illegal activity or information is not apparent
‣ Upon obtaining knowledge acts expeditiously to remove
or to disable access.
Art 14 Directive 2000/31/EC
18

26. Content
‣ Introduction
‣ Explanation & Differentiation
‣ 2007 - 2010; Any Changes?
‣ Ongoing Legal Discussion
‣ Trademark Use - Art 5
‣ Liability Exemption Art 14
‣ The Google France Ruling
‣Trademark Issues
‣ Liability Exemption
‣ Summary & Outlook
19

27. ECJ: Issues covered by the references:
C -236/08 C -237/08 C -238/08 C -278/08
Louis V Viaticum Tiger SARL Bergspechte
Trade Mark Issues according to
Directive 89/104 EEC & Regulation 40/94
Art 5
Art 5 (1) Art 5 (1) Art 5 (1)
(1) & (2) Liability Exception according to
Directive 2000/31 EC
Ads inside the (organic)
Keyw. search results = Keyword Buying
Art 5 (2) Art 14 Art 5 (1) Buying
French references dealt only with the
liability of Google / Google AdWords.
Austrian references dealt only with the
liability of the advertiser.
Art 14 Art 14
Thus Art 5 (2) in respect to the liability of
advertisers remained unanswered.
20

28. OGH: Keyword Buying?
Simplified layout of a SE List of Hits (“Trefferliste”) List of Hits (“Trefferliste”)
result page narrow meaning broad meaning
Top-Ad Top-Ad Top-Ad
(organic) Side- (organic) Side- (organic) Side-
Search Results Ad Search Results Ad Search Results Ad
List of Hits: List of Hits:
(organic) Search Results (organic) SR + Top Ads
21

29. OGH: Keyword Buying?
[6] [...] That advertising link appears under the heading
‘sponsored links’, which is displayed either on the right-hand
side of the screen, to the right of the natural results, or on the
upper part of the screen, above the natural results.
[43] [...] In those circumstances, examination of the protection
conferred by a trade mark on its proprietor in the event of the
display of advertisements of third parties which are not
‘sponsored links’ would not be useful in resolving the dispute
in the main proceedings.
In the view of the ECJ, Google does not display
advertisements inside their ‘organic’ search results.
ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171, par 6, 43.
22

30. Google France - Art 5 (1) (a)
By application of Article 5(1)(a) of Directive 89/104 [...] the
proprietor of a trade mark is entitled to prohibit a third party
from using [a sign identical with that trade mark]
- without the proprietor’s consent,
- when that use is in the course of trade,
- in relation to goods or services which are identical with, or
similar to, those for which that trade mark is registered
- and affects, or is liable to affect, the functions of the trade
mark.
lit a. identical
sign
+ identical
goods
+ functions
affected = !
ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 49
23

31. O2 - Art 5 (1) (b)
The proprietor of a registered mark may prevent the use of a
sign by a third party which is identical with, or similar to, his
mark under Article 5(1)(b) of Directive 89/104 only if the
following four conditions are satisfied:
- that use must be in the course of trade;
- it must be without the consent of the proprietor of the mark;
- it must be in respect of goods or services which are
identical with, or similar to, those for which the mark is
registered, and
- it must affect or be liable to affect the essential function of
the trade mark, which is to guarantee to consumers the
origin of the goods or services, by reason of a likelihood of
confusion on the part of the public.
lit b. identical
/similar
sign
+ identical
/similar
goods
+ ess. func.
affected = !
ECJ, 12.06.2008, C‑533/06, O2 Holdings and O2, ECR I‑4231, par 57.
24

32. Comparison:
Likeliness of Confusion - Essential Functions Affected
[39] Art 5 (1) lit. b: [...] whether there is a likelihood of
likeliness of
confusion confusion when internet users are shown, on the basis of a
keyword similar to a mark, a third party’s ad which...
... does not enable normally informed and reasonably
attentive internet users, or enables them only with difficulty,
to ascertain whether the goods or services referred to by the
ad originate from the proprietor of the trade mark or an
undertaking economically connected to it or, on the contrary,
originate from a third party.
[35] Art 5 (1) lit a. The function of indicating the origin of the
ess. funct.
affected mark is adversely affected if the ad...
... does not enable normally informed and reasonably
attentive internet users, or enables them only with difficulty,
to ascertain whether the goods or services referred to by the
ad originate from the proprietor of the trade mark or an
undertaking economically connected to it or, on the contrary,
originate from a third party.
ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171.
25

33. Comparison:
Likeliness of Confusion - Essential Functions Affected
... does not enable normally informed and reasonably
attentive internet users, or enables them only with difficulty,
to ascertain whether the goods or services referred to by the
ad originate from the proprietor of the trade mark or an
undertaking economically connected to it or, on the contrary,
originate from a third party.
... does not enable normally informed and reasonably
attentive internet users, or enables them only with difficulty,
to ascertain whether the goods or services referred to by the
ad originate from the proprietor of the trade mark or an
undertaking economically connected to it or, on the contrary,
originate from a third party.
ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171, par 39, 35.
26

34. Comparison:
Likeliness of Confusion - Essential Functions Affected
[39] [...] whether there is a likelihood of confusion when
internet users are shown, on the basis of a keyword similar to
a mark, a third party’s ad which...
... does not enable normally informed and reasonably
attentive internet users, or enables them only with difficulty,
to ascertain whether the goods or services referred to by the
ad originate from the proprietor of the trade mark or an
undertaking economically connected to it or, on the contrary,
originate from a third party.
ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171, par 39, 35.
27

35. Comparison:
Likeliness of Confusion - Essential Functions Affected
... does not enable normally informed and reasonably
attentive internet users, or enables them only with difficulty,
to ascertain whether the goods or services referred to by the
ad originate from the proprietor of the trade mark or an
undertaking economically connected to it or, on the contrary,
originate from a third party.
ess. funct.
affected = likeliness of
confusion
The criteria for adversely affecting the essential TM-function
and the likeliness of confusion are identical.
ECJ, 25.03.2010, C-278/08, Bergspechte, MarkenR 2010, 171.
28

36. Art 5 (1) Directive 89/104/EEC - Comparison
pre Google France
lit a. identical + identical = !
lit b. identical
/similar + identical
/similar + likeliness of
confusion = !
29

37. "
Art 5 (1) Directive 89/104/EEC - Comparison
pre Google France
lit a. identical + identical = !
lit b. identical
/similar + identical
/similar + likeliness of
confusion = !
post Google France
lit a. identical + identical + functions
affected = !
lit b. identical
/similar + identical
/similar + ess. funct.
affected = !
sign goods
30

38. Art 5 (1) Directive 89/104/EEC - Summary
HIGH
LEVEL OF PROTECTION
Art 5 (2) detrimental
use
functions
Art 5 (1) lit a. affected NEW!
Art 5 (1) lit b. ess. funct.
affected = likeliness of
confusion
LOW
31

39. Art 5 (1) Directive 89/104/EEC - Summary
HIGH
LEVEL OF PROTECTION
Art 5 (2) detrimental
use
Art 5 (1) lit a. functions ‣ Function of Origin
affected ‣ Advertising Function
Art 5 (1) lit b. ess. funct.
affected ‣ Function of Origin
LOW
32

40. ECJ Google France - Trademark Functions
According to Article 5(1)(a) of Directive 89/104 the proprietor
of a trade mark is entitled to prohibit a third party from using,
that sign if that use affects, or is liable to affect, the functions
of the trade mark.
Those functions include not only the essential function of the
trade mark ,the function of indicating origin, but also its other
functions, in particular that of guaranteeing the quality of the
goods or services in question and those of communication,
investment or advertising.
Function of Origin
TM Functions
Advertising Function
ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 49, 77.
33

41. Content
‣ Introduction
‣ Explanation & Differentiation
‣ 2007 - 2010; Any Changes?
‣ Ongoing Legal Discussion
‣ Trademark Use - Art 5
‣ Liability Exemption Art 14
‣ The Google France Ruling
‣Trademark Issues
‣ Function of Origin
‣ Advertising Function
‣ Liability Exemption
‣ Summary & Outlook
34

42. ECJ Google France - ‘Function of Indicating Origin’
Function of Origin
The essential function of a trade mark is to guarantee the
identity of the origin of the marked goods or service to the
consumer or end user by enabling him to distinguish the
goods or service from others which have another origin.
The question whether that function is adversely affected by
keyword advertising depends in particular on the manner in
which that ad is presented.
National court have to assess, on a case-by-case basis,
whether the facts of the dispute before it indicate adverse
effects, or a risk thereof, on the function of indicating origin.
ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 82, 83, 88.
35

43. ECJ Google France - ‘Function of Indicating Origin’
Function of Origin
Function of Indicating Origin is adversely affected if:
‣ the ad suggests that there is an economic link between that
third party and the proprietor of the trade mark.
‣ the ad, while not suggesting the existence of an economic
link, is vague to such an extent on the origin of the goods
or services at issue that normally informed and reasonably
attentive internet users are unable to determine, on the
basis of the advertising link and the commercial message
attached thereto, whether the advertiser is a third party vis-
à-vis the proprietor of the trade mark or, on the contrary,
economically linked to that proprietor.
ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 89, 90.
36

44. ECJ Google France - ‘Function of Indicating Origin’
What does an ad have to look like, so as not to
impair the function of origin?
‣ Is
it enough for a third party just not to show the
competitor’s TM in the ad? (“Adv-”)
‣ Competitor obliged also to display the competing brand?
‣ Different situation if TM-owner also displays text ads?
‣ Why should a TM-owner sponsor all the ads shown?
37

45. ECJ Google France - ‘Function of Indicating Origin’
What does an ad have to look like, so as not to
adversely affect the function of origin?
Text Ads:
Up to 4 lines,
Headline: max 25 signs
Following lines: 35 signs each
Display URL
Further content & formal restraints:
e.g. price, goods & service offered
38

46. Inhalt
‣ Introduction
‣ Explanation & Differentiation
‣ 2007 - 2010; Any Changes?
‣ Ongoing Legal Discussion
‣ Trademark Use - Art 5
‣ Liability Exemption Art 14
‣ The Google France Ruling
‣Trademark Issues
‣ Function of Origin
‣ Advertising Function
‣ Liability Exemption
‣ Summary & Outlook
39

47. ECJ Google France - Advertising Function
Advertising Function
The trade mark owner may have not only the objective of
indicating the origin of its goods or services, but also that of
using its mark for advertising purposes designed to inform
and persuade consumers.
The proprietor of a trade mark is entitled to prohibit a third
party from using his trade mark if that use adversely affects
the owner’s use as a factor in sales promotion or as an
instrument of commercial strategy.
With regard to the use of that sign for keyword advertising, it
is clear that that use is liable to have certain repercussions on
the advertising use of that mark by its owner and on his/her
commercial strategy.
ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 91, 92, 93.
40

48. ECJ Google France - Advertising Function
Advertising Function
Repercussions caused by the use of a sign identical with the
trade mark by third parties do not of themselves constitute an
adverse effect on the advertising function of the trade mark.
When internet users enter the name of a trade mark as a
search term, the home and advertising page of the proprietor
of that mark will appear in the list of the natural results,
usually in one of the highest positions on that list. That
display means that the visibility to internet users is
guaranteed.
Thus it must be concluded that use of a sign identical with
another person’s trade mark for keyword advertising is not
liable to have an adverse effect on the advertising function of
the trade mark.
ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 95, 97, 98.
41

49. ECJ Google France - Advertising Function
Advertising Function
‣ Whatshould happen in the unusual case that the TM-
owners website is not included in the natural search results?
‣ In practise only the first couple of results count. Is it still
enough for the TM-owner to be on the second page?
(“Primacy Effect”)
‣ Is there a duty for competitors to check if the TM-holder’s
website is (still) being displayed?
42

50. Content
‣ Introduction
‣ Explanation & Differentiation
‣ 2007 - 2010; Any Changes?
‣ Ongoing Legal Discussion
‣ Trademark Use - Art 5
‣ Liability Exemption Art 14
‣ The Google France Ruling
‣Trademark Issues
‣ Liability Exemption
‣ Summary & Outlook
43

51. ECJ Google France - Liability Exemption
The liability of a referencing service may be limited under
Article 14 of Directive 2000/31, if the role played by that
service provider is neutral, in the sense that its conduct is
merely technical, automatic and passive, pointing to a lack of
knowledge or control of the data which it stores.
With regard to Google AdWords, it is apparent that, with the
help of software which it has developed, Google processes
the data entered by advertisers and the resulting display of
the ads is made under conditions which Google controls.
Thus, Google determines the order of display according to,
inter alia, the remuneration paid by the advertisers.
ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par. 114, 115, 116.
44

52. ECJ Google France - Liability Exemption
The mere facts that the referencing service is subject to
payment, that Google sets the payment terms or that it
provides general information to its clients cannot have the
effect of depriving Google of the liability exemptions.The fact
that Google matches keywords and search terms is also not
sufficient of itself to justify the view that Google has
knowledge of, or control over, the data entered into its system
by advertisers and stored in memory on its server.
The role played by Google in the drafting of the commercial
message which accompanies the advertising link or in the
establishment or selection of keywords is however relevant.
The national court, which is best placed to be aware of the
actual terms on which the service is supplied, must assess
whether the role thus played by Google corresponds to that
described in Art 14 of Directive 2000/31.
ECJ, 23.03.2010, joint cases C-236/08 - C 238/08, Google France, MarkenR 2010, 174, par 116, 117, 118, 119.
45

53. ECJ Google France - Liability Exemption
- Keyword Tool (neutral)
- Price Setting Mechanism (neutral)
- Broad Matching Function (neutral)
- Display of Ads (neutral)
.
Every part considered on its own, appears neutral, thus the
liability exemption might be applied.
But however, should the broader concept of selling ‘user
attention’ really be deemed neutral?
46

54. Content
‣ Introduction
‣ Explanation & Differentiation
‣ 2007 - 2010; Any Changes?
‣ Ongoing Legal Discussion
‣ Trademark Use - Art 5
‣ Liability Exemption Art 14
‣ The Google France Ruling
‣Trademark Issues
‣ Liability Exemption
‣ Summary & Outlook
47

55. OGH: Bergspechte Outlook
The Austrian OGH presupposed that Art 5 (1) (a) is infringed
straight away (no likeliness of confusion required) if keyword
advertising is seen as a ‘use’ in the sense of Art 5 (1).
The ECJ stated in its recent judgements that Art 5 (1) (a) is
only fulfilled if the essential function, the function of
indicating origin is affected. Thus also in cases of Art 5 (1) (a)
(identical/identical) there is the requirement that the function
of origin is adversely affected (= ! likeliness of confusion).
[VI. 10] “However, if the advertisement is clearly separated
from the list of search results [‘Trefferliste’] and clearly
labeled as advertisement, a normally informed and
reasonably attentive internet users will not assume any such
connection.” [in respect to Art 5 (1) (b)]
OGH, 20.05.2008, 17 Ob 3/08b, Bergspechte.
48

56. Cour de Cassation: French Cases Outlook
“You must bear in mind,
that the court is in France,
the claimant is French,
the defendant is American.
Where do you think this will lead?”
Michael Edenborough, at the IPKats’s Google AdWords Rapid Response Seminar, London, 25.03.2010.
49

57. Summary & Outlook
‣ Change in the concept of trademark protection.
‣ Keyword Advertising on itself does not infringe function of origin,
only the content might.
‣ Unclear scope of the protection of the advertising function.
‣ Liability of referencing services (AdWords) still not clear.
‣ No legal certainty ...yet.
Many questions remain...
50

58. Thank You
Agenda For Your Attention
Mag. Maximilian Schubert LL.M.
Jurist.0.8.15@gmail.com
www.austrotrabant.at
51

59. BACKUP
Agenda
BACK UP
52

60. Art 5 (2) Directive 89/104/EEC
...[T]he proprietor shall be entitled to prevent all third parties
not having his consent from using in the course of trade any
sign which is identical with, or similar to, the trade mark in
relation to goods or services which are not similar to those
for which the trade mark is registered, where the latter has a
reputation in the Member State and where use of that sign
without due cause takes unfair advantage of, or is
detrimental to, the distinctive character or the repute of the
trade mark.
identical
/similar + different + detrimental
use = !
sign product
Art 5 (2) Directive 89/104/EEC
54

61. Austrian position concerning keyword advertising
MschG UWG
Top-Ad " "
“Adv+”
Side-Ad
" "
Top-Ad
“Adv-”
Side-Ad
56

62. Austrian position concerning keyword advertising
MschG UWG
Top-Ad " "
“Adv+”
Side-Ad
" "
Top-Ad TM use?** “List of Hits”*
“Adv-”
Side-Ad
!
56

63. Austrian position concerning keyword advertising
MschG UWG
Top-Ad " "
“Adv+”
Side-Ad
" "
Top-Ad TM use?** “List of Hits”*
“Adv-”
Side-Ad TM use?** !
*See Keyword Buying -above-
** Reference to the ECJ, OGH, 20.05.2008, 17 Ob 3/08b, Bergspechte.
56

64. Opinion Maduro, Google France
Only for TM
Issues dealt with Criteria for trademark infringement [54. & Fn 21.] with a rep.
trade
in the GA’s opinion i) no consent ii) in the iii) relates to iv) affects main affects other mark
by TM holder course of trade goods/services TM function TM functions infringement
Display of natural results
by Google (72.) ! ! ! "
(86.-92.)
NO
(no confusion)
Display of advertiser’s ads
by Google (70.) ! ! !
(79.-81.)
" “no risk of
confusion on
(86.-92.) the side of the
NO
(no confusion)
consumer”
Allowing advertisers to
select keyword by Google
(60.) ! ! "
(62.-67.)
"
(69.)
NO
(different goods &
no confusion)
“other side
of the coin”
Booking of keyword
by advertiser (147.) ! "
(151.)
NO
(private, not in the
course of trade)
MAYBE
Use of TM in the text of ads
by advertiser (46.) ! ! ! !
(153.)
(if ad or website
creates confusion)
MAYBE
Contributory liability
by Google/AdWords (114.) ! ! ! !
(123.)
(under certain
circumstances)
Infringement of
TMs with reputation (93.) ! ! ! not required
(94.) "
(113.)
NO
(result of a balance
of interests)
Directive AdWords Yes ! Exception AdWords No ! MAYBE
Liability Exception Applicable? applicable? for AdWords
Art. 12-14 Directive 2000/31 "
(136.) Google Yes ! (137.) Google Maybe (“not neutral”)
! criteria fulfilled
! criteria hypothetically fulfilled
" criteria not fulfilled
57

65. Opinion Maduro, Google France
AdWord’s service establishes a link Ads by the advertiser,
between the keyword/TM and the might be infringing, (153.)
goods of the advertiser. (79.) depending on the content of
Thus iii) criteria is fulfilled. the ad and the website =
if they create confusion.
However there is no
risk of confusion (86.-92.) Liability governt by
Thus the iv) criteria is not fulfilled. national law
Use 2
Advertiser’s
Adwords Website
Google
SERP
Keyword Advertiser
Selection
Use 1 Buying/booking of the keyword by the Advertiser is a private act
and thus no use in commerce.
Thus the ii) criteria is not fulfilled. (151.)
The sale /allowing of selection of the keywords by Adwords is not a use
for related to similar goods and service as Adwords sells keywords and NOT
good or services which are similar to the ones of the TM holder.
Thus the iii) criteria is not fulfilled. (67.)
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66. Changes of the Google AdWords Complaint Procedure
“the rest” “the 194”
e.g. Austria, (as of 4th of June)
Germany, etc. e.g. U.S., Canada, UK, Ireland + 190 others
U.S.
(as of 15th of June)
Filing of a complaint with Google AdWords
Search Engines Result Page
Use as Keyword to trigger the ad Use in Text of the ad
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67. OGH 17Ob3/08b 20.05.2008
Adv-
preliminary ruling: Bergspecht
AUT function as advertising - communication -
Arsenal [60] indication of function function
origin
Anheuser Busch Yes [VI. 4. iVm 11.]
trade name No [VI. 3.] “used in advertisement”
Arsenal decoration No [VI. 3.]
information
BMW/Deenik No [VI. 3.]
about the p.
purpose of distinguishing g&s
Arsenal [50.]
protection only for well
known TMs [11.]
autonomous protection
indication of origin affected No of the advertising &
[VI. 6., 7.]
“average user” [8.]
communicational
function [6.] ECJ
Yes Yes No
EU: Art 5 (1) S.2 lit a identical goods similar goods & EU: Art 5 (1) S.2 lit b
& services services
[VI. 9. last sanction-able
sentence] position? “likelihood of confusion”
use?
likelihood of confusion extensive interpretation
[VI. 9., 10.] [VI.12.]
likelihood of confusion
Side Ad Top Ad
no likelihood of confusion
[VI. 10.] [VI.10.] Version: 13.04.2009, 17:03
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