Opinion of the Advocate General — ECLI:EU:C:2009:569
Date: 2009-09-22
Language of the case: French
Subject matter: Right of establishment;Trade marks;Intellectual, industrial and commercial property;Approximation of laws;Freedom to provide services
Procedure: Reference for a preliminary ruling
Origin: France

Summary of the Judgment 1. Approximation of laws – Trade marks – Interpretation of Regulation No 40/94 and Directive 89/104 – Right of the proprietor of a trade mark to oppose the use by a third party of an identical sign for identical goods – Use of the trade mark within the meaning of Articles 9(1) of the regulation and 5(1) and (2) of the directive (Council Regulation No 40/94, Art. 9(1); Council Directive 89/104, Art. 5(1) and (2)) 2. Approximation of laws – Trade marks – Interpretation of Regulation No 40/94 and Directive 89/104 – Right of the proprietor of a trade mark to oppose the use by a third party of an identical sign for identical goods – Use of the trade mark within the meaning of Articles 9(1)(a) of the regulation and 5(1)(a) of the directive (Council Regulation No 40/94, Art. 9(1)(a); Council Directive 89/104, Art. 5(1)(a)) 3. Approximation of laws – Trade marks – Interpretation of Regulation No 40/94 and Directive 89/104 – Right of the proprietor of a trade mark to oppose the use by a third party of an identical sign for identical goods – Advertising in the context of a referencing service on the internet (Council Regulation No 40/94, Art. 9(1)(a); Council Directive 89/104, Art. 5(1)(a)) 4. Approximation of laws – Trade marks – Interpretation of Regulation No 40/94 and Directive 89/104 – Right of the proprietor of a trade mark to oppose the use by a third party of an identical sign for identical goods – Advertising in the context of a referencing service on the internet (Council Regulation No 40/94, Art. 9(1)(a); Council Directive 89/104, Art. 5(1)(a)) 5. Approximation of laws – Electronic commerce – Directive 2000/31 – Liability of intermediate service providers (European Parliament and Council Directive 2000/31, Art. 14) 1. An internet referencing service provider that stores, as a keyword, a sign identical to a trade mark and organises the display of advertisements on the basis of that keyword does not use that sign within the meaning of Article 5(1) and (2) of Directive 89/104 relating to trade marks or of Article 9(1) of Regulation No 40/94 on the Community trade mark. It is common ground that the referencing service provider carries on a commercial activity with a view to economic advantage when it stores as keywords, for certain of its clients, signs which are identical with trade marks and arranges for the display of ‘ads’ on the basis of those keywords. It is also common ground that that service is not supplied only to the proprietors of those trade marks or to operators entitled to market their goods or services, but is provided without the consent of the proprietors and is supplied to their competitors or to imitators. Although it is clear from those factors that the referencing service provider operates ‘in the course of trade’ when it permits advertisers to select, as keywords, signs identical to trade marks, stores those signs and displays its clients’ ‘ads’ on the basis thereof, it does not follow, however, from those factors that that service provider itself ‘uses’ those signs within the terms of Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94. The use, by a third party, of a sign identical or similar to the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider allows its clients to use signs identical or similar to trade marks, without itself using those signs. That conclusion cannot be called into question by the fact that the service provider is paid by its clients for the use of those signs. The fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign. (see paras 53-57, 105, operative part 2) 2. The use as a keyword by the advertiser of a sign identical to the trade mark of a competitor in an internet referencing service in order that internet users may become aware, not only of the goods or services offered by that competitor, but also of those of the advertiser, constitutes a use in relation to the goods or services of that advertiser. In addition, even in cases in which the advertiser does not seek, by its use, as a keyword, of a sign identical to the trade mark, to present its goods or services to internet users as an alternative to the goods or services of the proprietor of the trade mark but, on the contrary, seeks to mislead internet users as to the origin of its goods or services by making them believe that they originate from the proprietor of the trade mark or from an undertaking economically connected to it, there is use ‘in relation to goods or services’. Such use exists in any event when the third party uses the sign identical to the trade mark in such a way that a link is established between that sign and the goods marketed or the services provided by the third party. It follows that use by an advertiser of a sign identical with a trade mark as a keyword in the context of an internet referencing service falls within the concept of use ‘in relation to goods or services’ within the meaning of Article 5(1)(a) of Directive 89/104 relating to trade marks. (see paras 71-73) 3. Article 5(1)(a) of Directive 89/104 relating to trade marks and Article 9(1)(a) of Regulation No 40/94 on the Community trade mark must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical to that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical to those for which that mark is registered, when that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party. In such a situation, which is, moreover, characterised by the fact that the ‘ad’ in question appears immediately after entry of the trade mark as a search term by the internet user concerned and is displayed at a point when the trade mark is, in its capacity as a search term, also displayed on the screen, the internet user may err as to the origin of the goods or services in question. In those circumstances, the use by the third party of the sign identical to the mark as a keyword triggering the display of that ‘ad’ is liable to create the impression that there is a material link in the course of trade between the goods or services in question and the proprietor of the trade mark. Having regard to the essential function of a trade mark, which, in the area of electronic commerce, consists in particular in enabling internet users browsing the ‘ads’ displayed in response to a search relating to a specific trade mark to distinguish the goods or services of the proprietor of that mark from those that have a different origin, that proprietor must be entitled to prohibit the display of third-party ‘ads’ that internet users may erroneously perceive as emanating from that proprietor. It is for the national court to assess, on a case-by-case basis, whether the facts of the dispute before it indicate adverse effects, or a risk thereof, on the function of indicating origin. When a third party’s ‘ad’ suggests that there is an economic link between that third party and the proprietor of the trade mark, the conclusion must be that there is an adverse effect on the function of indicating origin. When the ‘ad’, while not suggesting the existence of an economic link, is to such an extent vague as to the origin of the goods or services at issue that normally informed and reasonably attentive internet users are unable to determine, on the basis of the advertising link and the commercial message attached thereto, whether the advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the contrary, economically linked to that proprietor, the conclusion must also be that there is an adverse effect on that function of the trade mark. (see paras 84-85, 87-90, 99, operative part 1) 4. Since the course of trade provides a varied offer of goods and services, the proprietor of a trade mark may have not only the objective of indicating, by means of that mark, the origin of its goods or services, but also that of using its mark for advertising purposes designed to inform and persuade consumers. Accordingly, the proprietor of a trade mark is entitled to prohibit a third party from using, without the proprietor’s consent, a sign identical with its trade mark in relation to goods or services which are identical to those for which that trade mark is registered, when that use adversely affects the proprietor’s use of its mark as a factor in sales promotion or as an instrument of commercial strategy. With regard to the use by internet advertisers of a sign identical to another person’s trade mark as a keyword for the purposes of displaying advertising messages, it is clear that that use is liable to have certain repercussions on the advertising use of that mark by its proprietor and on the latter’s commercial strategy. Having regard to the important position which internet advertising occupies in trade and commerce, it is plausible that the proprietor of a trade mark may register its own trade mark as a keyword with a referencing service provider in order to have an ‘ad’ appear under the heading ‘sponsored links’. Where that is the case, the proprietor of the mark must, as necessary, agree to pay a higher price per click than certain other economic operators if it wishes to ensure that its ‘ad’ appears before those of those operators which have also selected its mark as a keyword. Furthermore, even if the proprietor of the mark is prepared to pay a higher price per click than that offered by third parties that have also selected that trade mark, the proprietor cannot be certain that its ‘ad’ will appear before those of those third parties, given that other factors are also taken into account in determining the order in which the ads are displayed. Nevertheless, those repercussions of use by third parties of a sign identical with the trade mark do not of themselves constitute an adverse effect on the advertising function of the trade mark. (see paras 91-95) 5. Article 14 of Directive 2000/31 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) must be interpreted as meaning that the rule laid down therein applies to an internet referencing service provider when that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. If it has not played such a role, that service provider cannot be held liable for the data which it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it failed to act expeditiously to remove or to disable access to the data concerned. It is for the national court to examine whether the role played by an internet referencing service provider is neutral, in the sense that its conduct is merely technical, automatic and passive, pointing to a lack of knowledge or control of the data which it stores. (see paras 114, 119-120, operative part 3)