BergSpechte - the 'forgotten' AdWord case

Birgit Clark, Trade Mark Attorney, Boult Wade Tennant

This article first appeared in the May 2010 issue of ITMA Review. Click here to read this article in PDF format.

Not even having been assigned an Advocate General's Opinion, BergSpechte is another AdWords case, involving the internet search engine provider Google's paid referencing service. Google operates a system called AdWords, which allows advertisements to be dispalyed under the heading "sponsored links" alongside "natural results" in response to keywords being entered in the search engine. In this article the terms AdWord and keyword are used interchangeably.

BergSpechte was the owner of a combined word and device mark for BergSpechte covering clothes in class 25, travel services in class 39 and 41 teaching, entertainment and sporting services in class 41. BergSpechte's mark also included the following tagline in small print: "Outdoor-Reisen und Alpinschule Edi Koblmuller" (in English: outdoor tours and alpine school Edi Koblmuller). Treeking.at Reisen, one of BergSpechte's competitor's in the market of outdoor tours, purchased the terms 'Edi Koblmuller' and 'Bergspechte' as AdWords so that whenever an internet user entered either term as a search term in the search engine a Trekking.at Reisen advertisement was triggered and displayed as a sponsored link.

In contrast to the cases in Google France and Google, BergSpechte only deals with the entitlement of trade mark owners to act against advertisers but does not deal with Google's liability. Google itself was not part of the proceedings.

Decision
In its decision of 25 March 2010, the ECJ for the most part followed its reasoning in Google France and Google and held that an advertiser's purchase of a keyword which was identical or similar to a registered trade mark owned by a third party, in order to direct internet users to the advertiser's own website which offered similar or identical goods or services, amounted to behaviour a trade mark proprietor was entitled to prevent.

Adverse effect on trade mark functions
The court found that purchasing a third party's trade mark as a keyword constituted "use in the course of trade" even where the sign purchased as keyword did not appear in the advertiser's ad itself. However, the ECJ emphasised that the trade mark proprietor could not oppose use of a keyword which was identical with or similar to its mark unless all the conditions set out in Article 5 and in the court's precedents relating to Article 5 were met. In other words, it was decisive whether the advertiser's use of the keyword was use that was "liable to have an adverse effect on one of the functions of the mark".

Referring to its own precedents in L'Oreal (c-487/07), and Google France and Google, the ECJ reiterated that the functions of a trade mark not only included the 'function of indicating origin' but also other functions, in particular that of guaranteeing the quality of the goods or services and the functions of communication, investment and advertising. As regards to keyword use the relevant functions to be examined were the function of indicating origin and the function of advertising. Again referrring to its decision in Google France and Google, the ECJ confirmed its view that 'AdWord' use was not liable to have an adverse effect on the advertising function.

Cases of identity between keyword and trade mark
The ECJ held that where a keyword purchased by a third party was identical to a competitor's trade mark, the “adverse effect" had to relate to detriment caused to the “function of indicating origin”. Once more referring to its decisions in Google France and Google, the ECJ reiterated that a trade mark owner should be entitled to prevent the use of its trade mark as a keyword by an advertiser if the advertisement was so "vague" that it did not enable “normally informed and reasonably attentive internet users” to determine whether the goods or services referred to in the advertisement originated from the trade mark proprietor or an undertaking economically connected to it. Whether there was an adverse effect on the function of indicating origin, or a likelihood of such an adverse effect, had to be assessed by the national courts on a case-by-case basis.

Inter alia referring to its precedent in LTJ Diffusion (case c-291/00), the ECJ found that as regards to the use of the sign 'Bergspechte' as an AdWord, it was undisputed that it did "not reproduce all the elements constituting the trade mark." The sign could, however, be regarded as "containing differences so insignificant that they may go unnoticed by an average consumer within the meaning of the case-law cited". The ECJ held that it "for the national court to asses, in the light of all of the information available to it, whether that sign must be so classified".  

Cases of similarity between keyword and trade mark
With regard to the purchased keyword of 'Edi Koblmuller', which only reproduced a small part of the tagline included in the BegSpechte trade mark, the ECJ found that it could not be considered as identical to BergSpechte's trade mark since it did not "reproduce, without modification or addition, all the elements constituting" the trade mark. Whether the 'Edi Koblmuller' keyword had to be seen as similar to Bergspechte's combined word and device mark had to be decided by the national court.

For those cases where the keyword was merely similar to the trade mark, the ECJ held that it had to be determined whether there was "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 inofmred and reasonably attentive internet users, or enables them only with difficult, 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." The question of a likelihood of confusion also had to be determined by the national court.

No response to second Austrian question
The referring court had also asked whether the protection afforded to trade mark owners could be different in scope depending on whether the third party advertisement triggered by the search for a keyword did not appear as a "sponsored link" but elsewhere".

The ECJ decided not to answer this question, stating that the main proceedings clearly related to 'sponsored links' and that an examination of protection afforded to trade mark owners with regard to other types of third party advertisements, which are not "sponsored links" would not have been "useful in resolving the dispute in the main proceedings."

Comment
After the ECJ's judgments in Google France and Google, the BergSpechte decision did not come as much of a surprise. However, there are some points to note: while the ECJ's Google France and Google only referred to cases of double identity of the marks/keywords and identity goods/services, BergSpechte confirms and clarifies that trade mark enforcement can also be sought when a keyword is similar to a registered trade mark.

Somewhat intriguingly, the ECJ appears to propose that use of the keyword 'Bergspechte', despite not being identical to the BergSpechte's combined word and device trade mark, could nonetheless be "considered as identical" due to the fact that the keyword contained differences "so insignificant that they may go unnoticed by an average consumer".

It is regrettable that the ECJ did not elaborate this point further and so did not provide detailed guidance as to when a keyword may be considered as 'identical' to a trade mark. The ECJ also did not further comment on the question whether there should be a different standard for determining identity in keyword cases depending on whether a mark was a word mark or a (combined word and) device mark. This would have been of interest because under Google's current AdWord business model AdWord keywords relate to text only and do not include any kind of imagery.

With decisions on the French and Austrian referrals handed down, there is still hope that the ECJ might further clarify these points in its decisions in the AdWord referrals from the Dutch, German and English courts. It will have to be seen how the various national courts will apply the guidance provided in the Google France and Google and BergSpechte decisions. It is not unlikely that we will see differing results from the national courts.

Boult Wade Tennant