Brussels, 12/07/2010 (Agence Europe) - In a ruling returned on Thursday 8 July (Case C-558/08), the Court of Justice of the EU confirmed an earlier decision (EUROPE 10104, Google/Louis Vuitton) that companies using the names or brand names of their competitors as key words for their internet advertising are not breaking European rules on trademarks. The Court was responding to the Dutch High Court (Hoge Raad), which had asked it whether Directive 89/104, which aligns the legislation of the member states on brand names, allows the owner of a registered trademark to object to other operators- in this case, one which sells identical products to those under its trademark- from using key words in its internet referencing services which are identical or similar to its brand name, if the result of using this key word is to lead the internet user to the website of the re-seller of products under its brand name.
In this specific case, the company Portakabin Ltd (construction and sales of portable buildings), the owner of the brand “Portakabin”, objected to the company Primakabin B.V (sales and hire of new and second-hand portable buildings, including those built by Portakabin). The latter had reserved the key word “portakabin” and a number of variations on this word on Google's payable referencing service, “AdWords”, to show advertising messages which lead internet users to its website. Portakabin Ltd accused it of having illegally used its registered trademark and thus violated its rights.
With its interpretation of Articles 5, 6 and 7 of Directive 89/104 (repealed since by Directive 2008/95/EC), the Court confirmed that a company wishing to advertise its services may purchase key words on referencing services, even if these correspond to the names, trademarks or products of its competitors. It recommends, however, that the advertising should not mislead internet users as to the origin of the product or cause any confusion as to any links between the advertising company and the owner of the trademark.
Additionally, in this case and following this interpretation, the Dutch Court may not consider, solely on the basis of the fact that a company's advertisement uses another trademark with the addition of terms indicating that the products in question are being resold, that the advertisement gives the impression that there is an economic link between the reseller and the owner of the trademark or that it constitutes a serious threat to the reputation of the latter. The Court adds that a seller specialising in the sales of second-hand products of another company's brand cannot be banned from making use of this brand name when informing the general public of its resales activities which include, apart from the sales of second-hand products under the said brand, the sales of other second-hand products, unless the resales of these other products risk, with regard to volume, presentation or poor quality, seriously harming the image which the owner of the trademark has succeeded in building up around its trademark. (F.G./transl.fl)