Oberster Gerichtshof, Beschluss vom 05/10/2010 17 Ob 8/10s
Decision by national courts in the field of European Union law — ECLI:AT:OGH0002:2010:RS0126224
Date: 2010-10-05
Subject matter: Judicial cooperation in civil matters
Origin: Austria

82010AT1005(01)_ENG_SUMJURE
JURE SUMMARY
JURE SUMMARY
The plaintiff is a company with its seat in Austria. It produces and sells ski and snowboard service machines worldwide and owns the trade mark “Wintersteiger”. Google operates an internet search engine which is offered under country-specific top-level domains. The defendant had booked the keyword (AdWord) “Wintersteiger” on the German website (google.de). If a search was made under this search term, the first natural search result was a link to the plaintiff’s website as well as an advertisement of the defendant on the right side of the page. The advertisement included a link to the defendant’s website on which “Wintersteiger accessories” were offered without any reference to the fact that there was no economic link between the defendant and the plaintiff. The defendant did not display any Ad-Word advertisements linked to the term “Wintersteiger” on the corresponding Austrian website (google.at). The plaintiff brought an action before an Austrian court (under Article 5(3) Brussels I Regulation) seeking a prohibitory injunction on the basis that the defendant had infringed its Austrian trade mark by the advertisements. The court of first instance dismissed the application due to a lack of international jurisdiction. The appellate court held that it did have jurisdiction, but rejected the claim. The plaintiff appealed to the OGH (AT).
The OGH stays the proceedings and refers to the ECJ for an interpretation of Article 5(3) Brussels I Regulation. The question is whether an infringement had occurred in Austria or threatened to occur in the future. The OGH would prefer a solution which requires, in addition to the accessibility of the website, a further connection of the advertisement to the state in which the trade mark is registered (such as the language of the website or competition of the parties to the dispute in the market of the state in which the trade mark is registered, or the number of visits to the website from the trade mark state).