Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller GmbH v Günther Guni and trekking.at Reisen GmbH.
Date: 2010-03-25
18. As stated by the Court in Joined Cases C-236/08 to C-238/08 Google France and Google  [2010] ECR I-0000, paragraphs 51 and 52, the sign selected by the advertiser as keyword in the context of an internet referencing service is the means used to trigger that ad display and is therefore use ‘in the course of trade’ within the meaning of Article 5(1) of Directive 89/104.
19. That is, furthermore, use in relation to the advertiser’s goods or services, even where the sign selected as keyword does not appear in the advertisement itself ( Google France and Googl e , paragraphs 65 to 73).
21. In the situation envisaged in Article 5(1)(a) of Directive 89/104, in which a third party uses a sign identical with a trade mark in relation to goods or services which are identical with those for which that mark is registered, the proprietor of the mark is entitled to prohibit that use if it is liable to have an adverse effect on one of the functions of the mark ( Google France and Google , paragraph 79).
22. In the other situation envisaged in Article 5(1)(b) of that directive, where the third party uses a sign which is identical with the trade mark in relation to goods or services which are identical with or similar to those for which the trade mark is registered, the proprietor of the trade mark can oppose the use of that sign only where there is a likelihood of confusion ( Google France and Google , paragraph 78 and the case-law cited).
25. In that regard, it must be noted that the sign ‘Edi Koblmüller’, which reproduces only a small part of the BergSpechte trade mark, cannot be considered to be identical with that trade mark. 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 so insignificant that they may go unnoticed by an average consumer (Case C-291/00 LTJ Diffusion [2003] ECR I-2799, paragraph 54).
29. The exclusive right under Article 5(1)(a) of Directive 89/104 was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its function. The exercise of that right must therefore be reserved to cases in which a third party’s use of the sign affects or is liable to affect the functions of the trade mark (see, inter alia, Case C-206/01 Arsenal Football Club  [2002] ECR I-10273, paragraph 51; Case C‑487/07 L’Oréal and Others [2009] ECR I–0000, paragraph 58; and Google France and Google , paragraph 75).
30. It follows from that case-law that the proprietor of the trade mark cannot oppose the use of a sign identical with the 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).
31. 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).
32. As regards the use, as keywords, in an internet referencing service, of signs which are identical with trade marks, the Court has held in Google France and Google , paragraph 81, that the relevant functions to be examined are the function of indicating origin and the function of advertising.
33. In respect of the function of advertising, the Court held in that judgment 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 that function of the trade mark ( Google France and Google , paragraph 98).
35. In respect of the function of indicating origin, the Court held that the question whether that function is adversely affected when internet users are shown, on the basis of a keyword identical with a mark, a third party’s ad depends in particular on the manner in which that ad is presented. The function of indicating the origin of the mark is 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 connected to it or, on the contrary, originate from a third party ( Google France and Google , paragraphs 83 and 84).
36. On that point the Court 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).
38. 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).
39. It follows that, should the rule set out in Article 5(1)(b) of Directive 89/104 be applicable to the dispute in the main proceedings, it will be for the national court to hold whether there is a likelihood of confusion when internet users are shown, on the basis of a keyword similar to a mark, a third party’s ad which does not enable normally informed and reasonably attentive internet users, or enable 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 connected to it or, on the contrary, originate from a third party.