CLASS 46
Now in its twelfth year, Class 46 is dedicated to European trade mark law and practice. This weblog is written by a team of enthusiasts who want to spread the word and share their thoughts with others.
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FRIDAY, 25 OCTOBER 2013
BORNAY: Spain rules on CTMs as AdWords
Here, from our friend and former Class 46 team member Ignacio Marqués Jarque (Abogado, Baker & McKenzie Barcelona), comes news of a recent judgment of the Spanish CTM Tribunal (Second Instance) on a conflict between trade marks and Adwords. As this is the only Spanish case in this topic in our country (at least, to the best of Ignacio's knowledge), it has a certain interest since it departs from CJEU case law.
In Judgment no. 279/2013, issued on 27 June 2013, the CTM Tribunal of Alicante (Second Instance) overturned an earslier Ruling of the CTM Court no. 2 which had held the defendant liable for trade mark infringement in a dispute regarding the use of the plaintiff's CTM as Adword.
The facts, in short, were the following:
1. The plaintiff, owner of the CTM "BORNAY", became aware that, by searching such term with Google's search engine an advertising link to the defendant's website appeared under the heading "Sponsored links".
Consequently, the plaintiff brought infringement proceedings against the defendant.
2. In the first instance, the defendant was found liable for CTM infringement. The Court held that a proprietor of a trade mark is entitled to prohibit any advertising on the basis of a keyword identical or highly similar to that CTM.
3. In second instance, the CTM Tribunal followed the reasoning of the CJEU in Google France Joined Cases C-236, 237 and 238/08, in particular regarding uses having an adverse effect on the functions of the trade mark:
The CTM Tribunal of Alicante applied the CJEU's general doctrine to the facts under dispute. In its reasoning, particular attention was drawn on the particular manner in which the advertising link was presented. In the reported case:
On this fact finding, the CTM Tribunal overturned the Court's first instance decision and deemed that there was no trade mark infringement because the use of the sign by the defendant did not have the required ”adverse effect” on any of the plaintiff’s CTM functions (namely, the function of indicating origin). According to the CTM Tribunal, no average Spanish internet user would be confused by the advertisement resulting from the AdWord, as he/she would reasonably establish that the defendant's link was an "alternative" to the CTM owner's offering. Posted by: Blog Administrator @ 01.26
Tags: Spain, AdWords,
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BORNAY: Spain rules on CTMs as AdWords
Here, from our friend and former Class 46 team member Ignacio Marqués Jarque (Abogado, Baker & McKenzie Barcelona), comes news of a recent judgment of the Spanish CTM Tribunal (Second Instance) on a conflict between trade marks and Adwords. As this is the only Spanish case in this topic in our country (at least, to the best of Ignacio's knowledge), it has a certain interest since it departs from CJEU case law.
In Judgment no. 279/2013, issued on 27 June 2013, the CTM Tribunal of Alicante (Second Instance) overturned an earslier Ruling of the CTM Court no. 2 which had held the defendant liable for trade mark infringement in a dispute regarding the use of the plaintiff's CTM as Adword.
The facts, in short, were the following:
1. The plaintiff, owner of the CTM "BORNAY", became aware that, by searching such term with Google's search engine an advertising link to the defendant's website appeared under the heading "Sponsored links".
Consequently, the plaintiff brought infringement proceedings against the defendant.
2. In the first instance, the defendant was found liable for CTM infringement. The Court held that a proprietor of a trade mark is entitled to prohibit any advertising on the basis of a keyword identical or highly similar to that CTM.
3. In second instance, the CTM Tribunal followed the reasoning of the CJEU in Google France Joined Cases C-236, 237 and 238/08, in particular regarding uses having an adverse effect on the functions of the trade mark:
"The exclusive right under Article 5(1)(a) of Directive 89/104 and Article 9(1) of Regulation No 207/2009 was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfill its function".
(…) "The exercise of that right must therefore be reserved to cases in which a third party's use of the sign affects or is liable to affect the functions of the trade mark. Those functions include not only the function of indicating origin, but also its other functions, in particular that of guaranteeing the quality of the goods or services and those of communication, investment or advertising."
(…) "The question whether the functions of the trade mark is adversely affected when internet users are shown, on the basis of a keyword identical to the mark, a third party's ad, such as that of a competitor of the proprietor of that mark, depends in particular on the manner in which that ad is presented."
(…) "In particular, the function of indicating the origin of the mark is adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them but with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trademark or an undertaking economically connected to it or, on the contrary, originate from a third party."
The CTM Tribunal of Alicante applied the CJEU's general doctrine to the facts under dispute. In its reasoning, particular attention was drawn on the particular manner in which the advertising link was presented. In the reported case:
• The sign "BORNAY" did not appear in the advertising link right after the entry of the trade mark as a search term and
• the advertising link was displayed beside the natural results of the search.
On this fact finding, the CTM Tribunal overturned the Court's first instance decision and deemed that there was no trade mark infringement because the use of the sign by the defendant did not have the required ”adverse effect” on any of the plaintiff’s CTM functions (namely, the function of indicating origin). According to the CTM Tribunal, no average Spanish internet user would be confused by the advertisement resulting from the AdWord, as he/she would reasonably establish that the defendant's link was an "alternative" to the CTM owner's offering. Posted by: Blog Administrator @ 01.26
Tags: Spain, AdWords,
Sharing on Social Media? Use the link below...Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA3419
Reader Comments: 1
Post a Comment
Submitted By: Luca Geoni
25 October 2013 @ 14.43
The ownership of a TM means that the owner can use the sign in an AdWord to convey Clients to his website: if the mark is used by an unauthorized third party to convey customers to the website of the third party (an not the one of the trademark holder), that is for me affecting the function of a trademark, because customers are not addresset to the website "of origin", but to those of someone unrelated to the origin. For these reason the arguments on which all these decisions lie are not correct.
25 October 2013 @ 14.43
The ownership of a TM means that the owner can use the sign in an AdWord to convey Clients to his website: if the mark is used by an unauthorized third party to convey customers to the website of the third party (an not the one of the trademark holder), that is for me affecting the function of a trademark, because customers are not addresset to the website "of origin", but to those of someone unrelated to the origin. For these reason the arguments on which all these decisions lie are not correct.
MARQUES does not guarantee the accuracy of the information in this blog. The views are those of the individual contributors and do not necessarily reflect those of MARQUES. Seek professional advice before action on any information included here.
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