Portakabin Ltd, Portakabin BV v Primakabin BV.
ECJ decision 8 July 2010
A recent preliminary ruling from the ECJ in Portakabin Ltd, Portakabin BV v Primakabin BV. (Case C-558/08) affirms its earlier decisions on keyword advertising as well as exhaustion and the re-labelling of goods.
This case was concerned with the display of advertisements on the basis of a keyword identical with a trade mark or with only minor spelling mistakes. The goods advertised were second-hand goods, having already been placed on the market by the proprietor of the trade mark. Also, the reseller had affixed labels bearing its name and removed labels bearing the trade mark from the goods. The website to which the keyword led included goods from another source in addition to goods manufactured by the proprietor of the trade mark.
Google's Adwords service was at the heart of the dispute as it has been in many keyword cases. An internet search using Google identifies websites as either "natural results" or "sponsored links". The former are those sites that best correspond to the words inputted by the user and the latter are those whose owners have paid Adwords to reserve the words inputted as "keywords".
Portakabin Ltd manufactures and supplies mobile buildings. It is the owner of a Benelux registered trade mark for the word PORTAKABIN covering such goods.
Primakabin sells and leases new and second-hand mobile buildings, including those manufactured by Portakabin. The dispute arose after Primakabin chose 'portakabin', 'portacabin', 'portokabin' and ' portocabin' as Adwords keywords.
1. a trade mark owner can stop an advertiser from advertising on the basis of a keyword identical with, or similar to, that mark where that advertising does not enable average internet users easily to ascertain whether or not the goods or services referred to in the advertisement originate from the trade mark owner or a third party.
2. an advertiser cannot always rely on the defence in Article 6(1) that they can use indications that describe characteristics of the goods or their intended purpose as this applies only where the use by the third party is 'in accordance with honest practices in industrial or commercial matters'. This is a matter for the national court to decide.
3. a trade mark owner cannot stop an advertiser from advertising the resale of goods with a keyword that corresponds to, or is similar to, the trade mark unless there is a "legitimate reason". A "legitimate reason" must be found where the advertiser removes the trade mark from the goods and replaces it with a label bearing the reseller's name. However, an advertiser can only be prevented from using the trade mark to advertise its resale activities which include the sale of other second-hand goods if the sale of those other goods risks seriously damaging the image which the owner has created for its mark.
The matter will now be left to the Dutch Court to decide.