Portakabin v Primakabin

19 July 2010

By Ben Evans

An important decision on the use of trade marks as keywords has been released by the ECJ.

The case confirmed previous rulings on the matter and in basis prohibits the use of a companies trade mark to trigger search engine adverts if those adverts do not allow a user to tell who is behind the adverts. i.e. it will breach the trade mark owner's rights if it: "does not enable average internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or from an undertaking economically linked to it,"

A portable building lease and sales company used the mark 'Portakabin' as a keyword. This is owned by portable building maker Portakabin, Portakabin brought a claim on the basis of trade mark infringement. According to the decision: "Use by an advertiser of a sign, which is identical with another person’s trade mark, to suggest to internet users an alternative to the offer from the proprietor of that mark, is use ‘in relation to goods and services’ within the meaning of [the Trade Marks Directive]...That being so, the trade mark proprietor cannot oppose that use of the sign, identical with its mark, if that use is not liable to cause detriment to any of the functions of that mark."

The court further reiterated that Google themselves do not make 'use' of trade marks: "As regards the function of advertising, the Court has held that use of a sign identical with another person’s trade mark in a referencing service such as ‘AdWords’ is not liable to have an adverse effect on the advertising function of the trade mark...That finding must also apply in the present case, since the dispute in the main proceedings concerns the selection of keywords and the display of ads within the context of the same ‘AdWords’ referencing service."

It went on: "As regards the function of indicating origin, the Court has held that the question whether that function is adversely affected when internet users are shown a third party’s ad, on the basis of a keyword identical with a mark, will depend in particular on the manner in which that ad is presented...The function of indicating the origin of the mark will be adversely affected if the ad does not enable normally informed and reasonably attentive internet users, or enables them only with difficulty, to ascertain whether the goods or services referred to by the ad originate from the proprietor of the trade mark or an undertaking economically linked to it or, on the contrary, originate from a third party,"

This is one of a number of recent cases on this area and it is safe to say now that this is how such cases will be treated in the future i.e. the search engine itself is not deemed to use a trade mark but the advertiser is in so much as the use causes confusion as to the origin of the products in question.

Ben Evans is a trainee solicitor at Lawdit.