Following the ruling of the European Court of Justice (ECJ) on Google’s Adwords policy in the Louis Vuitton case, which we wrote about in March, a new decision dealing with the problems associated with AdWords was handed down yesterday in the case Portakabin Ltd v Primakabin BV, Case C-558/08.
Portakabin build and supply mobile buildings and own the trademark for “Portakabin” in that market sector in the Benelux countries. Primakabin, a seller and lessor of new and second-hand mobile buildings, including legitimate second-hand Portakabin buildings, used the word “Portakabin” and some similar misspelled variants as keywords on Google’s AdWords. Portakabin sued for trademark infringement and, after passing through the Dutch courts, a number of questions were subsequently referred to the ECJ.
The judgment reiterates one of the main decisions in the Louis Vuitton case: that advertisers who use competitor’s trademarks as “keywords”, must make it clear in the advertisement that there is no commercial connection between the advertiser and the proprietor of the trademark. This case goes on state that, unless this is done, there is no defence under Article 6 of the Trademark Directive (which in essence allows third parties to use trademarks to indicate the origin of products provided that such use is in accordance with honest commercial practices).
However this latest decision also makes clear that re-sellers of second-hand products can use third party trademarks as keywords, provided that it is clear from their website that they only sell “used” or “second-hand” products manufactured by the trademark owner and providing that the manner by which he sells those products does not risks seriously damaging the reputation of the trademark owner or his mark.
This latest decision also confirms that misspellings of trademark names constitute signs which are similar to the trademark, and therefore the usual rules of analysis apply: notably, is there a likelihood of confusion?
All very helpful, and we now await the ECJ’s ruling in the Marks & Spencer v Interflora case which will analyse issues on dilution and the free-riding on the distinctive character of the trademark.