McCarthy Trademark Roundtable Oxford, 14 February 2014

Keyword advertising and EU trademark law

Prof. Dr. Martin SenftlebenVU University Amsterdam

Bird & Bird, The Hague

TM owner competitor

search engine

• TM owner: de facto obliged to pay?

• competitor: profiting from brand reputation?

• search engine: more attractive service?

Interests involved

role of consumers?

Dreams coming true…

identical signs identical goods or services

adverse effect on one of the

protected trademark functions

Double identity

• ‘These functions include not only the essential

function of the trade mark, which is to guarantee

to consumers the origin of the goods or services,

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.’ (para. 58)

• recognition of further protected functions,

in particular goodwill functions

CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure

Advertising function

• CJEU, 12 November 2002, case C-236-

238/08, Google/Louis Vuitton

‘Since the course of trade provides a varied offer

of goods and services, the proprietor of a trade

mark may have not only the objective of

indicating, by means of that mark, the origin of its

goods or services, but also that of using its mark

for advertising purposes designed to inform and

persuade consumers.’ (para. 91)

Investment function

• CJEU, 22 September 2011, case C-323/09,

Interflora/Marks & Spencer

‘In addition to its function of indicating origin and, as

the case may be, its advertising function, a trade

mark may also be used by its proprietor to acquire

or preserve a reputation capable of attracting

consumers and retaining their loyalty.’ (para. 60)

Communication function

• CJEU, #, case C-#, #/#

‘???’

(para. #)

…not necessarily with

regard to competitors

‘...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.’ (para. 97)

• advertising function not affected

• CJEU shields keyword advertisers from

protection following from function theory

CJEU, 23 March 2010, cases C-236/08, Google/Louis Vuitton

• no adverse effect on investment function

‘...if the only consequence of that use is to oblige

the proprietor of that trade mark to adapt its efforts

to acquire or preserve a reputation capable of

attracting consumers and retaining their loyalty.

Likewise, the fact that that use may prompt some

consumers to switch from goods or services

bearing that trade mark cannot be successfully

relied on by the proprietor of the mark.’ (para. 64)

CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

CJEU, 14 November 2013, case C-383/12 P, Environmental Manufacturing/Elmar Wolf

ADVERSE EFFECT

required

taking of ADVANTAGE

not sufficient

Damage to function required

• use of a mark with a

reputation in keyword

advertising implies taking

of an unfair advantage

• nonetheless ‘due cause’ defence for

informing consumers about alternatives if

– not offering mere imitation

– neither dilution nor tarnishment

– no adverse effect on protected functions

CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer

…not necessarily with

regard to search engines

• ‘The fact of creating the technical conditions

necessary for the use of a sign and being paid for

that service does not mean that the party offering

the service itself uses the sign.’ (para. 57)

• service provider does not make relevant

use: no trademark claim

• safe harbour for hosting applicable

(para. 114-116)

CJEU, March 23, 2010, case C-236/08, Google/Louis Vuitton

• new standard of ‘diligent economic operator’

‘...it is sufficient, in order for the provider of an

information society service to be denied entitlement

to the exemption [for hosting], for it to have been

aware of facts or circumstances on the basis of

which a diligent economic operator should have

identified the illegality in question...’ (para. 120)

• still no general monitoring obligation

• but own investigations relevant (para. 122)

• furthermore: limited stay-down obligation

CJEU, 12 July 2011, case C-324/09, L’Oréal/eBay

Why so restrictive?

‘Nevertheless, whatever the protection afforded

to innovation and investment, it is never

absolute. It must always be balanced against

other interests, in the same way as trade mark

protection itself is balanced against them. I

believe that the present cases call for such a

balance as regards freedom of expression and

freedom of commerce.’ (para. 102)

CJEU, Google/Louis Vuitton, Opinion AG Poiares Maduro

So no expansion at all?

• double identity protection of goodwill

functions for all TMs (CJEU, Interflora)

• transparency obligation for keyword

advertisers in double identity cases

(CJEU, Google/Louis Vuitton)

• same transparency obligation in similarity

cases (CJEU, Bergspechte)

• safe harbour for hosting only for diligent

economic operators (CJEU, L’Oréal/eBay)

Still expansion of protection

from a protection expansion tool

to an appropriate balancing tool?

Role of the function theory

The end. Thank you!For publications, search for

‘senftleben’ on www.ssrn.com.

contact: m.r.f.senftleben@vu.nl