Ad-acadabra: the Dutch Supreme Court's questions in the Primakabin/Portakabin's case

The Dutch Supreme Court (J.B. Fleers, A.M.J. van Buchem-Spapens, E.J. Numann, F.B. Bakels, C.A. Streefkerk) apparently needed some time to think about which questions to refer to the ECJ after Advocate-General Verkade had suggested 10 main questions (with several subquestions) in his opinion of September 12, 2009 (more here) with regard to third party use (Primakabin) of a trade mark of someone else (Portakabin) as an Adword. But on December 12 the Supreme Court succeeded. Here are the questions (please note that I tried to translate them as good as possible, but it remain my own words; for 'goodness sake' here the link to the decision in Dutch):

(1) (a) If a trader in certain goods or services (hereinafter: the advertiser) makes use of the possibility offered by a provider of an internet search machine to assign an Adword which is identical to a trade mark registered by someone else for similar goods or services, which assigned Adword – without being visible for the user of the searchmachine - results in the internet user who types in the Adword finding a reference to the website of the advertiser: Does this yield to use by the advertiser of the registered trade mark according to art. 5 par. 1 under a of the Trade Mark Directive (TMD)?

(1)(b) Does it – in addition - make a difference whether the reference is listed in the ordinary list with pages found, or, in an indicated advertising part of the page?

(1)(c) Does it – in addition – make a difference whether the advertiser already actually offers identical goods or services in the referral message on the webpage of the provider of the search machine, or whether the advertiser actually offers such goods or services on an own webpage to which the internet user is linked by hyperlinking?

(2) If and I so far the answer to the first question is confirmative, can art. 6 TMD, especially art. 6 par. 1 under b and c TMD, be an obstacle for the trade mark owner to forbid the use as meant in question 1, and if so, under which circumstances?

(3) In so far question 1 is confirmed, is art. 7 TMD applicable, in so far as an offer of the advertiser meant in question 1, concerns goods which were put on the community market by the trade mark owner or with permission of the trade mark owner?

(4) Are the answers on the preceding questions also applicable on search words assigned by the advertiser as meant in question 1, in which the trade mark is deliberately represented with small errors in writing, due to which the search possibilities for the public that uses the internet are more effective, assumed that the trade mark is represented correct on the website of the advertiser.

(5) If and in so far the answers to the preceding questions lead to the conclusion that there is no use of a trade mark according to art. 5 par. 1 TMD: Are the member States allowed, according to art. 5 par. 5 TMD, to apply, to the use of adwords as involved in this case, national rules concerning the protection against the use of a sign other than for the purposes of distinguishing goods or services, where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark, or are the judges of the member States bound by communal borders connected with the answers on the preceding questions?

Posted by: Gino Van Roeyen @ 14.15
Tags: adwords, Dutch Supreme Court, Portakabin, primakabin, trade mark infringement,
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