Just as you thought it was safe to assume we had seen the last variation on the theme “Does Adwords infringe trade marks?”, up have popped two more cases, this time involving German chocolate and Austrian ski service machinery. Tom Harding slaloms through the Braunschweig and Wintersteiger cases.
Who: OLG Braunschwieg, 2 U 113/08, of 24 November 2010 and C-523/10 Wintersteiger
When: 2010, 2011
Law stated as at: 7 February 2011
Readers of marketinglaw.co.uk will be aware that over the last two years or so there have been numerous CJEU judgments dealing with trade mark owners' claims that third party use of Google Adwords for keyword-based search engine advertising in various differing sets of circumstances infringed their trade marks. The upshot of this was that trade mark infringement was likely to arise:
- where an ad suggested the third party was economically linked to the trade mark owner; or
- where the ad was so vague concerning the origin of the goods/services being advertised, that a reasonably informed and attentive internet user could not determine whether (on the basis of the ad) the advertiser was economically linked to the trade mark owner or not.
Two recent AdWords cases have now further addressed these (and associated) issues, and we must say thank you to the IPKat for providing the details of these.
OLG Braunschwieg, 2 U 113/08 of 24 November 2010
This was the first German AdWord-related decision since "Google France" (joined cases C-236/08 to C-238/08).
In summary, the claimant sold confectionary (including praline chocolates), and had rights in the 'MOST' trademark, selling via the website www.mostshop.com. The defendant also sold chocolates (including pralines) via various websites. In 2007, the defendant booked an ad via AdWords, and chose the (generic) word 'Pralinen' as a keyword. It also chose the AdWords 'broad match' function, where Google automatically also serves ads based on searches for variations of the keyword, including phrases containing the keywords. As a result, whenever someone searched for the claimant's product 'Most-Pralinen', the defendant's ad was displayed (as 'most' had been inserted by the broad match function).
The claimant won its claim for trade mark infringement at first instance in the German Regional Court of Braunschweig. On appeal, the Higher Regional Court of Braunschweig confirmed the decision, holding that users who enter a trade mark as a search term into a search engine will assume that any displayed ads are 'somehow [be] economically connected' to the trade mark owner. Despite the defendant not including the claimant's marks in its ads, and directing users towards its own site, the ads were still held to be too 'vague' as they did not include any clarification that the claimant and defendant were not economically linked. The defendant was therefore held liable for trade mark infringement, and also said to have a duty to check whether the 'broad match' function had included any third party marks or not. The case has been appealed however, and perhaps rightly so (see below).
Why this matters:
Google France did not suggest that any clarificatory statements had to be included in ads, nor that liability could also stem from 'broad match'. The decision therefore seems to contradict current case law, but is still good law in Germany and also provides another useful discussion of advertisers' potential liability in this area. Marketinglaw.co.uk will of course provide further updates when the appeal is heard, and see whether anything more concrete can be taken away to help advertisers reduce potential liability when using AdWords.
Google searches are of course inherently international in nature, so it surprising that jurisdictional issues have not to date yet played a part in AdWords cases. Enter the recent Wintersteiger case however, which has now been referred to the CJEU.
A brief summary of the facts is as follows. The claimant (Wintersteiger) makes and distributes worldwide ski and snowboard machinery and spare parts, and registered the Wintersteiger trade mark in Austria in various classes. The defendant (Products 4U Sondermaschinenbau GmbH) is a German company that also makes and distributes ski and snowboard machinery. It also crucially also sells spare parts for Wintersteiger machinery that are neither produced nor endorsed by Wintersteiger, but refers to them as Wintersteiger accessories in any event. Products 4U sell worldwide, including in Austria.
The defendant reserved the AdWord 'Wintersteiger' on the German Google site (Google.de). When a user typed in Wintersteiger, a Products 4U ad therefore appeared, and did not contain any clarification that it was not commercially linked to Wintersteiger. Products 4U didn't buy the 'Wintersteiger' keyword on the Austrian Google site (Google.at) however.
Wintersteiger claimed that Products 4U infringed its trade mark, and issued proceedings in Austria. It claimed that as Google.de was accessible in Austria, and was also written in German, it was targeting Austrian customers (and therefore harm had occurred in Austria). Products 4U countered that Google.de was directed exclusively at German users, and if it had wanted to target Austrian users, it would have booked the same AdWord on Google.at. It therefore claimed that the Austrian mark had not (allegedly) been infringed, and the Austrian Court therefore had no jurisdiction.
The initial decision was appealed, with the main arguments now revolving around this jurisdictional issue, and the fundamental question of where the 'harmful event' (i.e. infringement) took place (Austria or Germany). As Wintersteiger's mark is only protected in Austria, the question of whether the Google.de ads are deemed to have been directed at Austria as well as Germany is key; if they were solely directed at Germany, then this would not have infringed Wintersteiger's Austrian mark. As this is clearly a complex question, the Austrian Court has referred three questions to the CJEU to try and establish this issue. In summary, these are:
- does a Court only have jurisdiction if the AdWord is bought on the Google site in the Court's own territory (in this case, Google.at);
- does the court have jurisdiction if the relevant Google site can simply be accessed in Court's territory; and
- is jurisdiction based on more factors other than just website accessibility, and if so what are they (for example in this particular case, it was raised that people on the Austrian/German border might reasonably use Google.de for searches anyway).
The CJEU is due to hear the case later in 2011, so we will (hopefully) get clarity as the answers then.
Why this matters:
With the internet clearly being international in nature, advertisers need as much certainty as possible as to how potential AdWords infringement may apply across jurisdictions. For example, Products 4U may have reasonably assumed that by purposely not buying a trade-marked keyword on Google.at, a risk of Austrian infringement would not arise. The CJEU ruling will hopefully therefore provide more certainty around this issue, and marketers will be able to plan their AdWords campaigns with more knowledge of the potential risks of action going forward.