More AdWords …! A quick lunch time post to let our readers know that the European Court of Justice’s (CJ) decision in the German AdWord referral in “Eis.de GmbH v BBY Vertriebsgesellschaft mbH”, in short: “Eis.de” (case C-91/09) has now been published. The case was originally called “Bananabay” in Germany (case reference: I ZR 125/07). For more background on this case, please see the IPKat’s earlier posts here and here.

In a mere court order of 26 March 2010, the ECJ has now also answered the German Federal Supreme Court’s (Bundesgerichtshof) question on AdWord use. The outcome is a bit of an anti-climax and if you think you have read it all before, well, you are not mistaken. The CJ’s response in Eis.de is almost identical to that given in the Austrian BergSpechte referral of 26 March 2010 (Case C-278/08, see the IPKat’s post here) and very similar to the CJ’s responses in Google France (joined Cases C-266 to 238/08, see the IPKat’s post here and here) of 23 March 2010. The CJ cites joined Cases C-266 to 238/08 in almost every paragraph of Eis.de. Most notably the court refers to paragraphs 65-73, 79, 81, 83 -84, 89 – 90, 98 of cases C-266 to 238/08.

Please note that this blog post is based on the IPKat’s translation of the German version of the order since we do not yet have an official English translation. The Eis.de case was based on the following facts: the claimant and the defendant both sold adult entertainment products. The claimant who owned a trade mark registration for “bananabay” sought to stop its competitor’s use of that trade mark as an ‘AdWord’ claiming trade mark infringement and seeking damages.

The Bundesgerichtshof had referred the following question to the CJ:

“Is there use for the purposes of Article 5(1)(a) of Directive 89/104/EEC where a third party provides as a keyword to a search engine operator a sign which is identical with a trade mark, without the consent of the proprietor of that trade mark, so that, on inputting the sign identical with the trade mark as a search term into the search engine, an electronic promotional link to the third party’s website advertising identical goods or services appears in an advertising block set apart from the list of search results, that link is marked as a sponsored link and the advertisement itself does not comprise the sign nor contain any reference to the trade mark proprietor or to the products it is offering for sale?”

Here is the IPKat’s translation of the German version of the CJ’s response:

“Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical that trade mark which that advertiser has, without the consent of that proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertising does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or by an undertaking which is economically connected to it or, on the contrary, originate from a third party.”

Well, says the IPkat, no surprises here then?

Wearing her German hat and munching away on her lunch time salad Merpel muses: nein, I am really not surprised either. The CJ’s reasoning in large parts appears to be an extension of the Bundesgerichshof’s advertising and technology friendly precedents in the pcb and Beta-Layout cases. However, while it is quite certain that the Bundesgerichtshof will decide that the origin function is not adversely affected, don’t we think that the Bundesgerichshof might have to fine tune its line of argumentation just a tiny bit in relation to company names and AdWord use, with the CJ holding that it is not enough that the triggered ad is clearly labelled as a “sponsored link”, the ad also must not be vague? What do our (German) readers think? And one more thing, why did the CJ only hand down an order and not a full judgment for the German referral?

Please click here to read the CJ’s order in its German/French entirety.

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Yes, it is that Opel/Autec case again!

On 14 January 2010 the German Federal Supreme Court (Bundesgerichtshof) has handed down its eagerly awaited decision in the Opel replica car decision (case reference I ZR 88/08 – Opel-Blitz II of 14 January 2010). While the full decision is not yet available, the Bundesgerichtshof has published a press release concerning this case (press release No. 9/10 of 15 January 2010 ) which the IPKat has summarised and translated below.

The first civil senate (I. Zivilsenat) has decided that a car manufacturer cannot rely on its trade marks rights in order to prevent the distribution of toy model cars that are scale models of the original cars bearing the original car manufacturer’s trade mark on the relevant space. The claimant, Adam Opel GmbH, was the proprietor of a device trade mark for the so-called “Opel-Blitz” covering motor vehicles and toys. Opel tried to prevent the distribution of toy cars manufactured by the defendant which were copies of Opel’s Astra V8 Coupé car in a reduced scale including the Opel-Blitz device mark affixed to their grille.

The court of first instance, the Regional Court (Landgericht) Nürnberg-Fürth had referred this matter to the ECJ for a preliminary ruling. The ECJ (C-48/05) ruled that “the affixing by a third party of a sign identical to a trade mark registered for toys to scale models of vehicles cannot be prohibited under Article 5(1)(a) of the directive unless it affects or is liable to affect the functions of that trade mark.” In its decision the ECJ further took the view that it was “… for the referring court to determine, by reference to the average consumer of toys in Germany, whether the use at issue in the main proceedings affects the functions of the Opel logo as a trade mark registered for toys.” The relevant question hence was whether the relevant consumers would interpret the logo device affixed on the model toy as a reference of trade origin and believe that the model car was manufactured by the claimant or a economically linked undertaking.

In light of the ECJ decision, the Regional Court (Landgericht) Nürnberg-Fürth dismissed the claimant’s case. The Nürnberg-Fürth court (case reference 4HK O 4480/04 of 11 May 2007) decided that the relevant consumer would regard the logo affixed on a scale model car’s grille merely as “part of the model car” and would not attribute the logo to the manufacturer of the original car in the sense of a reference of trade origin or believe that there was an economic link or a licence agreement in place between the toy car manufacturer and the manufacturer of the original car. The court of appeal (OLG Nürnberg, case reference 3 U 1240/07 of 29 April 2008) as well as the Bundesgerichtshof confirmed this view.

In its 14 January 2010 decision the Bundesgerichtshof denied an infringement of the claimant’s Opel-Blitz mark. The requirements of trade mark infringement were met insofar as the affixing of the Opel-Blitz device on the defendant’s toy car constituted use of a sign that was identical to the claimant’s mark on identical goods (toys). However, this use did not affect the main function of the mark, which is indicating the trade origin of the goods (here: toy car), nor did this use affect any other functions of the trade mark because the relevant consumer would merely regard the Opel-Blitz device affixed on the defendant’s model car as an exact copy of the mark that the original car had affixed on exactly the same space. Consequently, the Opel-Bliz mark would only be seen as a reproduction of a detail of the original car. The court stressed that the relevant consumers would not regard it as a reference to the trade origin of the toy car.

Insofar as the claimant’s mark was registered for motor vehicles, the goods concerned (model cars and motor vehicles) were not similar so that there was no trade mark infringement based on a likelihood of confusion.

Finally, there was also no infringement of a mark with a reputation because there was no unfair advantage taken of or detriment caused to the repute of the claimant’s mark insofar as it was registered for motor vehicles.

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In a notable decision of 26 February 2009 (case reference I ZR 219/0 “Thermoroll”) – which was only recently published in its entirety – the German Federal Supreme Court (BGH) decided that it is “significantly misleading” and consequently an unfair commercial practice under section 5 German Unfair Competition Act, if someone uses a trade mark in conjunction with the ® symbol without being the owner or licensee of the mark or without being otherwise authorised. Things may be judged differently only if the unauthorised user is the proprietor mark of a trade mark that is similar to the trade mark that was used together with ® symbol and use of the mark amounts to “genuine use” of the registered mark under Article 26 (3) German Trade Mark Act.

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The German Federal Supreme Court (Bundesgerichtshof, “BGH”) has today published its decision in a trade mark dispute between FIFA, the world football body, and Italian sweets company Ferrero concerning football World Cup trade marks, which Ferrero GmbH, Ferrero’s German subsidiary, had registered. The court’s decision is not yet available in its entirety but the court’s press release (no. 232/2009 of today’s date), on which this report is based, clearly indicates the score of this trade mark match: 1:0 for Ferrero.

So what was this dispute about? FIFA, based in Switzerland, organises the football World Cup and not surprisingly also owns numerous trade marks that relate to the football World Cup 2006, which was held in Germany, as well as trade marks relating to the upcoming World Cup to be held in South Africa next year.

FIFA tried to cancel Ferrero’s numerous World Cup trade mark registrations arguing that the Italian sweets maker had no rights to register marks such as “WM,” short for Weltmeisterschaft “World Cup” or “2010″ in reference to next year’s football World Cup in South Africa. FIFA has an obvious interest in controlling its World Cup franchise and claimed that Ferrero’s trade mark registrations were an infringement of Germany’s unfair competition law.

During past world cup tournaments, Ferrero had distributed free collectible stickers showing each player in the German national team with its Hanuta and Duplo chocolate wafers – and this Kat admits that in days gone by, she used to collected them herself.

The courts of the lower instances, the LG and OLG Hamburg, had both decided in Ferrero’s favour. The German Federal Supreme Court agreed and ruled that FIFA could neither base its cancellation claim on trade mark law nor on unfair competition law. The court’s press release states that there was no likelihood of confusion between both parties trade marks. (IPKat comment: yes, I am wondering about this bit too: what were the marks? What exactly did FIFA’s marks cover? We don’t know and the press release unfortunately doesn’t tell us.)

Furthermore, the court further decided that FIFA could also not base its claim on the “work title rights” (“Werktitel”- a German quirk) it owned for “WM 2010″, “GERMANY 2006″ and “SOUTH AFRICA 2010″. The judges ruled that FIFA was also barred under unfair competition law, including the so called “general clause” as stipulated by section 3 of the German Law of Unfair Competition (UWG).

Ferrero’s trade marks did not influence the consumers to assume that the defendant (Ferrero GmbH) was an official FIFA sponsor. The court held that Ferrero did not unfairly block FIFA’s efforts to market the World Cup events via licensing through sponsors. FIFA’s basic constitutional right to commercially exploit the tournaments it organises did not extend so far that it could prevent all types of third party exploitation of this sports event.

This should be a very interesting decision to read (once the reasoning is available): with potentially far reaching consequences for organisers of sport (and other events) that seek to financially exploit its events.

Case reference: Bundesgerichtshof, I. Zivilsenat , I ZR 183/07 “WM-Marken” – to read the court’s press release, please click here (in German!).

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