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Keywords; 'double identity' cases and the wrongful inclusion of an average consumer test

Written by Paul Bicknell on 12 December 2011

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AdWords to Keywords; "double identity" cases and the wrongful inclusion of an consumer test (Part III).

L'Oreal SA v eBay

The facts were that L'Oreal complained that when users of eBay would search using their trade mark those users would be directed to goods which infringed L'Oreal's marks either because the sale of such goods was a parallel import or the goods themselves were counterfeit.

The CJEU found in particular that:

"On a proper construction of Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94, the proprietor of a trade mark is entitled to prevent an online marketplace operator from advertising - on the basis of a keyword which is identical to his trade mark and which has been selected in an internet referencing service by that operator - goods bearing that trade mark which are offered for sale on the marketplace, where the advertising does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods concerned originate from the proprietor of the trade mark or from an undertaking economically linked to that proprietor or, on the contrary, originate from a third party." (Emphasis added).

The court like the Google case's has again snuck in a average consumer test, I am not entirely sure why the court did this.

Attached to this (though it is implied from the above) is the following:

"The operator of an online marketplace does not 'use' - for the purposes of Article 5 of Directive 89/104 or Article 9 of Regulation No 40/94 - signs identical with or similar to trade marks which appear in offers for sale displayed on its site."

Following on from the above the CJEU found in: Interflora Inc v Marks & Spencer Plc, that:

"1. Article 5(1)(a) of [the Trade Marks Directive] and Article 9(1)(a) of [the CTMR] must be interpreted as meaning that the proprietor of a trade mark is entitled to prevent a competitor from advertising - on the basis of a keyword which is identical with the trade mark and which has been selected in an internet referencing service by the competitor without the proprietor's consent -- goods or services identical with those for which that mark is registered, where that use is liable to have an adverse effect on one of the functions of the trade mark. Such use:

-adversely affects the trade mark's function of indicating origin where the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party;

-does not adversely affect, in the context of an internet referencing service having the characteristics of the service at issue in the main proceedings, the trade mark's advertising function; and

-adversely affects the trade mark's investment function if it substantially interferes with the proprietor's use of its trade mark to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty."

Again the court requires that an adverse effect would result if "...the advertising displayed on the basis of that keyword does not enable reasonably well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether the goods or services concerned by the advertisement originate from the proprietor of the trade mark or an undertaking economically linked to that proprietor or, on the contrary, originate from a third party."

Again the inclusion of an average consumer test in "double identity" cases is open to doubt.

The theme of including an average consumer test into double identity cases is not welcomed as a matter of law because it requires an extra factual/evidential hurdle for rights holders to jump when the nature of a double identity case does not include the an average consumer test.

If you're interested in Intellectual Property and would like to find out more, please call Michael Coyle on 0800 0862 0157 or email michael.coyle@lawdit.co.uk for a free no obligation chat.

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