More than half a year after the ECJ published its decisions in Google France a number of questions still remain. While some questions might be answered by the Interflora reference (e.g. Art 5 (2) TMD), others will most probably remain open.
One question that will for sure remain is HOW an ad must be drafted so as not to have an adverse effect on the function of indicating origin. The ECJ ruled that ads must not be misleading or vague to such an extent that users might – incorrectly- assume a non-existing financial connection between the advertiser and the trademark used as a keyword to trigger the ad.
On the other hand, the court also expressed that Keyword Advertising per se does not have an adverse effect on the function of indicating origin. This means that Keyword Advertising in general has to be admissible and thus not infringing.
But where to draw the line? To me it seems that the border between ‘vague‘ and ‘not infringing‘ is a difficult one and that the courts need to have the discretionary powers to decide upon it. When doing so, the courts may opt for either a TM-owner-friendly approach, a neutral position, or for an advertiser-friendly approach.Some readers might recall in this respect my fierce criticism of the BergSpechte II decision of the Austrian Supreme Court of Justice which followed a very TM-owner-friendly interpretation of the ECJ’s ruling (German-speaking readers can read a comment on this case by Dr. Ott and myself in the MMR 2010, 745). The ratio of the Austrian decision – concerning an ad which did not contain the TM of the claimant – is that the advertiser had not done enough to rule out any chance of confusion ...Zum vollständigen Artikel