Portakabin Ltd and Portakabin BV v Primakabin BV.
Date: 2010-07-08
26. Therefore, the first question must be examined in the light of Article 5(1)(a) of Directive 89/104. That provision entitles the proprietor of a trade mark to prevent use, without his consent, of an identical sign by a third party, where that use takes place in the course of trade, where it is for goods and services identical to those in respect of which the mark is registered, and where it adversely affects, or is liable adversely to affect, the functions of the trade mark (see, inter alia, Case C‑17/06 Céline [2007] ECR I‑7041, paragraph 16, and Case C‑487/07 L’Oréal and Others [2009] ECR I‑5185, paragraph 58).
28. This also constitutes a use in relation to the goods and services of the advertiser ( Google France and Google , paragraphs 67 to 69). That finding is not invalidated by the fact, emphasised in the observations submitted to the Court, that the sign which is identical to the mark – in the present case, the sign ‘portakabin’ – is used not only in relation to the goods under that mark – that is to say, for the resale of units manufactured by Portakabin – but also for goods from other manufacturers, such as, in this instance, units manufactured by Primakabin or by other competitors of Portakabin. On the contrary, 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 Article 5(1)(a) of Directive 89/104 ( Google France and Google , paragraphs 70 to 73).
29. 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 ( L’Oréal and Others , paragraph 60, and Google France and Google , paragraph 76).
30. Those functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services (‘the function of indicating origin’), but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising ( L’Oréal and Others , paragraph 58, and Google France and Google , paragraph 77).
31. As regards the use of signs identical with trade marks as keywords for a referencing service, the Court held, at paragraph 81 of Google France and Google , that the relevant functions to be examined are the function of indicating origin and the function of advertising.
32. 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 ( Google France and Google , paragraph 98, and Case C‑278/08 BergSpechte [2010] ECR I‑0000, paragraph 33).
34. 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 ( Google France and Google , paragraphs 83 and 84, and BergSpechte , paragraph 35).
35. On that point the Court has also stated that, in the case where 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. Similarly, in the case where the ad, while not suggesting the existence of an economic link, is vague to such an extent on 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 ( Google France and Google , paragraphs 89 and 90, and BergSpechte , paragraph 36).
38. It is common ground that the dispute in the main proceedings concerns only the use of keywords in the context of an internet referencing service resulting in the display of ads under the section ‘sponsored links’ of the search engine managed by that service provider. In those circumstances, an examination of the protection granted to the proprietor of a mark in the event of the display of third party ads outside of ‘sponsored links’ can have no bearing on the outcome of the dispute (see, by analogy, Case C‑466/04 Acereda Herrera [2006] ECR I‑5341, paragraph 48, and Case C‑215/08 E. Friz  [2010] ECR I‑0000, paragraph 22).
42. That link and commercial message are concise and, in general, do not enable the advertiser to make specific sales offers or to provide a comprehensive overview of the types of goods or services which it markets. That circumstance does not, however, alter in any way the fact that the advertiser, having chosen as a keyword a sign identical with another person’s trade mark, intends that internet users who enter that word as a search term should click on its advertising link in order to find out about its offers. There is, therefore, use of that sign ‘in relation to goods or services’ within the meaning of Article 5(1)(a) of Directive 89/104 (see Google France and Google , paragraphs 67 to 73).
47. In that regard, it should be borne in mind that a sign is identical with a trade mark only where it reproduces, without any modification or addition, all the elements constituting the trade mark or where, viewed as a whole, it contains differences which are so insignificant that they may go unnoticed by an average consumer (Case C‑291/00 LTJ Diffusion [2003] ECR I‑2799, paragraph 54, and BergSpechte , paragraph 25).
50. In the latter case, where the third party uses a sign which is similar to the trade mark in relation to goods or services identical with those for which the trade mark is registered, the trade mark proprietor can oppose the use of that sign only where there is a likelihood of confusion ( Google France and Google , paragraph 78, and BergSpechte , paragraph 22).
51. The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion (see, inter alia, Case C‑342/97 Lloyd Schuhfabrik Meyer [1999] ECR I‑3819, paragraph 17; Case C‑120/04 Medion [2005] ECR I‑8551, paragraph 26; and Case C‑102/07 adidas and adidas Benelux [2008] ECR I‑2439, paragraph 28).
52. It follows that, should the rule set out in Article 5(1)(b) of Directive 89/104 be applicable, it will be for the national court to determine whether there is a likelihood of confusion when internet users are shown, on the basis of a keyword similar to a trade mark, a third party’s ad which 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 from an undertaking economically linked to it or, on the contrary, originate from a third party ( BergSpechte , paragraph 39).
54. In the light of all of the foregoing, the answer to the first and fourth questions is that Article 5(1) of Directive 89/104 must be interpreted as meaning that a trade mark proprietor is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with, or similar to, that mark, which that advertiser has selected for an internet referencing service without the consent of the proprietor, in relation to goods or services identical to those in respect of which the mark is registered, where that advertising 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 or, on the contrary, originate from a third party.
Question 5
57. By limiting the effects of the rights which a trade mark proprietor derives from Article 5 of Directive 89/104, Article 6(1) of that directive seeks to reconcile the fundamental interests of trade-mark protection with those of free movement of goods and freedom to provide services in the common market (Case C‑63/97 BMW [1999] ECR I‑905, paragraph 62; Case C‑228/03 Gillete Company and Gillete Group Finland [2005] ECR I‑2337, paragraph 29; and adidas and adidas Benelux , paragraph 45).
63. As the Court has already ruled, the intended purpose of products ‘as accessories or spare parts’ was cited by the legislature only by way of example, that being the usual situation in which it is necessary to use a trade mark in order to indicate the intended purpose of a product. The application of Article 6(1)(c) of Directive 89/104 is therefore not limited to that situation ( Gillette Company and Gillette Group Finland , paragraph 32).
64. The situations coming within the scope of Article 6(1)(c) must, however, be limited to those which correspond to the objective of that provision. However, as Portakabin and the Commission have correctly observed, the objective of Article 6(1)(c) of Directive 89/104 is to enable providers of goods or services, which are supplementary to the goods or services offered by a trade mark proprietor, to use that mark in order to inform the public of the practical link between their goods or services and those of the proprietor of the mark (see, to that effect, Gillette Company and Gillette Group Finland , paragraphs 33 and 34).
67. That condition is the expression of the duty to act fairly in relation to the legitimate interests of the trade mark proprietor. The issue of whether that condition has been satisfied must be assessed by, inter alia, taking account of the extent to which the use by the third party is understood by the relevant public, or at least by a significant section of that public, as establishing a link between the third party’s goods and those of the trade mark proprietor or a person authorised to use the trade mark, and of the extent to which the third party ought to have been aware of that (Case C‑245/02 Anheuser-Busch [2004] ECR I‑10989, paragraphs 82 and 83, and Céline , paragraphs 33 and 34).
71. Taking account of those factors, it must be concluded that, in the situation described in paragraphs 54 and 68 above, the advertiser cannot, in principle, claim to have acted in accordance with honest practices in industrial or commercial matters. It is, however, for the national court to carry out an overall assessment of all the relevant circumstances in order to determine whether there may be evidence to justify a contrary finding (see, to that effect, Case C‑100/02 Gerolsteiner Brunnen [2004] ECR I‑691, paragraph 26, and Anheuser-Busch , paragraph 84 and the case-law cited).
74. Article 7 of Directive 89/104 contains an exception to the proprietor’s exclusive right laid down in Article 5 of that directive, in that it provides that the proprietor’s right to prohibit all third parties from using the mark is exhausted where goods have been placed on the market in the EEA under that trade mark by the proprietor or with his consent, unless there are legitimate reasons for him to oppose further commercialisation of the goods (see, inter alia, BMW , paragraph 29; Joined Cases C‑414/99 to C‑416/99 Zino Davidoff and Levi Strauss [2001] ECR I‑8691, paragraph 40; and Case C‑59/08 Copad [2009] ECR I‑3421, paragraph 41).
76. Next, it cannot be disputed that the resale by a third party of second-hand goods, which had originally been placed on the market under the trade mark by the proprietor of that mark or by a person authorised by him, constitutes a ‘further commercialisation of the goods’ within the meaning of Article 7 of Directive 89/104, and that use of that mark for the purposes of that resale can therefore be prohibited by that proprietor only where there are ‘legitimate reasons’, within the meaning of Article 7(2), such as to justify his opposition to that commercialisation (see, by analogy, BMW , paragraph 50).
77. Lastly, it is settled case-law that, when trade-marked goods have been placed on the market in the EEA by the proprietor of the trade mark or with his consent, a reseller, besides being free to resell those goods, is also free to make use of the trade mark in order to bring to the public’s attention the further commercialisation of those goods (Case C‑337/95 Parfums Christian Dior [1997] ECR I‑6013, paragraph 38, and BMW , paragraph 48).
79. Such a legitimate reason exists, inter alia, when the advertiser’s use of a sign identical with, or similar to, a trade mark seriously damages the reputation of that mark ( Parfums Christian Dior , paragraph 46, and BMW , paragraph 49).
80. The fact that the reseller, through its advertising based on a sign identical with, or similar to, the trade mark, gives the impression that there is a commercial connection between the reseller and the trade mark proprietor, and in particular that the reseller’s business is affiliated to the proprietor’s distribution network or that there is a special relationship between the two undertakings, also constitutes a legitimate reason within the meaning of Article 7(2) of Directive 89/104. Advertising which is liable to give such an impression is not essential to the further commercialisation of goods placed on the market under the trade mark by its proprietor or with his consent or, therefore, to the purpose of the exhaustion rule laid down in Article 7 of Directive 89/104 (see, to that effect, BMW , paragraphs 51 and 52, and Case C‑348/04 Boehringer Ingelheim and Others [2007] ECR I‑3391, paragraph 46).
86. In that regard, where the reseller, without the consent of a trade mark proprietor, removes that trade mark from the goods (‘de-branding’) and replaces it with a label bearing the reseller’s name, with the result that the trade mark of the manufacturer of the goods in question is entirely concealed, the trade mark proprietor is entitled to prevent the reseller from using that mark to advertise that resale. In such a case, damage is caused to the essential function of the trade mark, which is to indicate and guarantee the origin of the goods, and the consumer is prevented from distinguishing the goods originating from the proprietor and those originating from the reseller or other third parties (see, to that effect, Case C‑349/95 Loendersloot [1997] ECR I‑6227, paragraph 24, and Boehringer Ingelheim and Others , paragraphs 14, 32 and 45 to 47).
89. However, as the Court has already held, the mere fact that a reseller derives an advantage from using another person’s trade mark in so far as advertisements for the sale of goods covered by the mark, which are in other respects honest and fair, lend an aura of quality to his own business does not constitute a legitimate reason within the meaning of Article 7(2) of Directive 89/104 ( BMW , paragraph 53).
90. It must be held, in that regard, that a reseller who markets second-hand goods under another person’s trade mark, and who is specialised in the sale of those goods, will have difficulty communicating such information to his potential customers without using that mark (see, by analogy, BMW , paragraph 54).