To be honest I have to say that it is almost impossible to summarize the opininion. Verkade touches all issues one can imagine with regard to - to be short - the use of metatags and 'Adwords' on the internet broadly and precise. It looks as if Verkade saw this case as an ultimate opportunity to get clarity from the ECJ on as much questions as can be formulated. In stead of highlighting a few questions in particular, I choose to post solely the questions - I hope that the translation is accurate enough to understand them. Before I do that a - very - short summary of the facts of the case.

Portakabin Limited and Portakabin B.V. (trade mark owner / licensee of the trade mark 'Portakabin') started trade mark infringement proceedings - summary proceedings - against competitor Primakabin '(owner of the trade mark 'Primakabin'). Portakabin and Primakabin both offer kabins for sale via advertisements published on the internet. Primakabin sells new and used kabins, also second hand Portakabin's. Primakabin has entered into an Adwords agreement with Google for 'portakabin', 'portacabin', 'portokabin' and 'portocabin'. A google search on these Adwords lead to an advertisement of Primakabin (on its website) in which the words 'new and second hand units' were used, but Primakabin changed this afterwards to 'used portakabins'.

Central question of the case (as formulated by Verkade in his opinion): can use of the involved Adwords in searchmachines on the internet be regarded as use of a trade mark as defined in art. 2.20 par. 1, under a, b or c Benelux Convention on Intellectual Property ('use to distinguish goods') or as other use as defined in art. 2.20 par. 1 under d BCIP? The Presiding Judge in first instance and the Court of Appeal decided that the use of the involved Adwords is other use, but denied that Primakabin took unfair advantage of the trade mark. The Court of Appeal however ordered Primakabin to refrain from the use of 'used primakabins' in its advertisement and to make a direct link to the page on its website were the used primakabines were advertised.

I turn now to the questions formulated by Verkade:

1.1. If a trader (hereinafter an advertiser) in particular goods or services uses the possibility that internet search machine operators offer to select a search word (a so called Adword) that is identical to a trade mark registered by a third party for similar goods or services, which selected Adword - in a way invisible for the user of a search machine - has as a consequence that if a user of the internet types that Adword, the result list contains a reference to the website of the advertiser, is such use - as such - a use of the trade mark according to art. 5 par. 1 under a?

1.2. Does it make any difference if the reference:

(i) can be found in the normal results list;

(ii) in a separate advertisement part of the results list;

(iii) can be found in the normal results list and in a separate advertisement part?

2. If question 1 is answered in the negative, is there nevertheless a use according to art. 5 par. 1 under a if:

2.1. the advertiser offers already in the referal message on the webpage of the search machine operator actual goods or services similar to the goods or services for which the trade mark has been registered and/or,

2.2. if the advertiser on an own webpage, which can be reached by clicking the link on the webpage of the search machine operator, actually offers goods or services that are similar to the goods or services for which the trade mark has been registered?

2.3. should the situations mentioned in 2.1 and 2.2 be threatened different in the cases mentioned in question 1.2 under (i), (ii) and (iii)?

3.1. In so far as question 1 or question 2 are answered positively, can art. 6, especially par. 1 under b and c, prevent the trade mark owner of acting against the use mentioned in question 1 and question 2?

3.2 Are any qualitatively or quantitavely requirements applicable with regard to the offer of hte advertiser as mentioned in questions 2.1 and 2.2?

3.3. Does a confirmative answer to question 3.1 also apply to Adwords selected by the advertiser as mentioned in question 1 in which the trade mark deliberately contains slight slips, which facilitates the search possibilities of the public that uses the internet, assuming that the trade mark is used correctly on the website of the advertiser?

4. Is it of any importance for answering the above questions that the average consumer as defined by the ECJ who uses the internet, although being aware of the trade mark connotation that a searchword has, uses that searchword nevertheless in the first place or more as a simple tool to find not only the goods or services of a particular trade mark owner, but also the goods or services of other traders?

5. If question 4 is answered in the negative, does it matter for the answer on one or more of questions 1-3, that the registered trade mark, although not feasible for invalidity on one of the grounds of art. 3, is considered by a part of a public more as an indication of characterics of a good or service then a as trade mark? Do any requirements apply with regard to the size of the part of the public that should be taken into account?

6.1 In so far question 1 or question 2 are answered in the positive, does art. 7 apply, in so far as the offer of the advertiser as mentioned in question 2.1 and 2.2 relates to goods that have been brought on the community market by the trade mark owner of with his consent?

6.2 If the answer on question 6.1 is positive, does this positive answer also apply if the offer of the advertiser relates also or exclusively to the maintenance or repair of the goods mentioned in question 6.1?

6.3 Can an affirmative answer on question 6.1 be substracted if the offer of the advertiser is not restricted to goods mentioned in question 6.1 or services in question 6.2?

6.4 Is an affirmative answer on question 6.1 also applicable for searchwords in which the trade mark is used with slight slips, due to which the search possibilities of the public is facilitated, assuming that the trade mark is used in a correct way on the website of the advertiser?

7.1. In so far question 1 or question 2 are answered positively, should a positive answer also be given, now with regard to use as defined by art. 5 par 1 under b, if the offer of the advertiser mentioned in question 2 does not relate to identical goods, but to similar goods, which can confuse the public?

7.2. Is a risk of confusion given in case of use as mentioned in question 1 or are any extra requirements applicable?

7.3. Are the answers to questions 3 till 5 of any importance for the answer to questions 7.1 and 7.2?

8.1. In so far as question 1 or question 2 are answered in the positive, should a positive answer also be given with regard to use as defined by art. 5 par. 1 under b, if the advertiser does not selected an Adword that is identical to the registered trade mark, but similar to the trade mark, if the public could be confused by the trade mark and the Adword?

8.2. Is a risk of confusion given in case of use as mentioned in question 1, connected with an offer as set forth in question 2.1 or a linking as seth forth in question 2.2 or any extra requirement applicable?

8.3. Are the answers to questions 3 till 5 of any importance for the answer to questions 8.1 and 8.2?

8.4. Should the fact that with the selection of deliberatily slight slips facilitates the use of the internet by the public, play a positive or a negative role for the position of the advertiser?

9.1. In so far question 1 or question 2 are answered in the positive, should a positive answer also be given, now with regard to use as defined in art. 5 par 2., if the offer of the advertiser as set forth in the offer mentioned in question 2.1 or the linking mentioned in question 2.2 does not relate to identical goods or services, but relates to goods or services that are not similar to the goods or services for which the trade mark has been registered, if the trade mark of the trade mark owner is well known in the member state and by the use of the trade mark unfair advantage is taken from the trade mark or the trade mark harms the distinctiveness or the reputation of the trade mark without a valid reason?

9.2. Is unfair advantage or harm to the distinctiveness or the reputation of the trade mark a given fact, in case of use as mentioned in question 1, connected to an offer set forth in question 2.1 or a linking as set forth in question 2.2, or are any extra requirements applicable?

10.1 If and in so far the answer to the former questions leads to the conclusion that there is no use of the trade mark as defined by art. 5 par 1 under a or b or par 2, are the member states in a position to award protection according to national rules concerning the protection against the use of a sign not for distinguishing goods or services, as mentioned in art. 5 par 5, against use without a valid reason of that sign, that, to the opinion of the courts in those member states, takes unfair advantage of or harms the distinctiveness or the reputation of the trade mark?

Enough questions for today, yesterday and tomorrow I would say. Very curious how the Supreme Court's questions will look like. It looks that my father was right: I should have choosen mathematics after I finished college.

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