2010-09-04 – by Attorney Dr. Stefan Lausegger (Column)
Keyword advertising is on the rise - as the economic success of Google proves. This form of advertising consists of booking certain search terms ("keywords") on search engines, with the effect that when users enter this search term, they are presented with not only organic search results, but also paid advertisements. Selecting suitable keywords is quite difficult - what could be more obvious than using a well-known competitor's brand or the name of a competitor?
In 2007, the Supreme Court prohibited an Austrian food company from using the word part of a competitor's brand as a keyword and thus directing customers to its own website; this created a risk of confusion and the impression of a - non-existent - close relationship between the parties to the dispute. The German Federal Court of Justice, on the other hand, declared it permissible for a direct competitor to book another company's name as a keyword on Google, as this did not create a risk of confusion.
In 2008, the Supreme Court asked the European Court of Justice to answer the question of whether the use of another's trademark for advertisements for identical (or at least similar) goods by a competitor was permissible. In its ruling of March 25, 2010, the European Court of Justice recognized that a trademark owner may prohibit a competitor from using his trademark in this way, at least if it is difficult to determine from the advertisement who the advertised goods or services come from. The key point here is that the European Court of Justice does not infer this risk of confusion (which is decisive if the goods are merely similar) from the content of the advertised website, but from the advertisement itself. This must therefore be designed in such a way that it is clear to the user that the advertised goods do not come from the owner of the trademark. The user can then decide whether to click on the advertisement anyway, or to continue searching to find the website of the trademark owner. This is intended to ensure that a brand's essential function is maintained, namely to indicate its origin from a particular company through its use. With certain reservations, this ruling can also be applied to legal positions relating to names and unfair competition (trademarks); this will have to be taken into account in the future when selecting Adwords.
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