European Court of Justice applies recent ruling in Google v Louis Vuitton case, but we’re still none the wiser of the implications – Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmueller v Guenter, European Court of Justice

As reported here, the European Court of Justice has recently ruled on the long-awaited Google v Louis Vuitton case, concerning the extent to which brand owners, competitors and search engine providers like Google can stop or enable registered trade mark terms to be used using Google’s AdWords service. As can be seen from that blog, the result was not particularly clear. The ECJ has had another opportunity very quickly to apply the ruling.

In this subsequent case, Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmueller (BergSpechte) owned a trade mark for travel arrangements. A competitor called trekking.at Reisen used particular marks that Bergspechte considered to be too similar to its own registered trade marks to generate paid-for ads using Google’s AdWords service. The case proceeded through the Austrian courts and the matter was referred to the ECJ to rule.

The ECJ has ruled that the EU’s Trade Marks Directive enables a registered trade mark owner to prohibit an advertiser from advertising, based on a keyword identical with or similar to the trade mark through an Internet referencing service (eg Google), goods or services identical with those for which the mark is registered, such that the advertising does not enable an average Internet user without difficulty from ascertaining whether the goods or services originate from the trade mark owner or an entity economically connected with it or instead by a third party. The selection of the keyword by the advertiser was use in the course of trade and in relation to its own goods or services, even where the mark did not appear in the advert itself. It is for the national court to decide whether the signs are sufficiently similar and also whether the average Internet user could ascertain that the advertiser is not connected to the trade mark owner.

Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.Upload-IT.com, comments: ‘In other words, there is no advance from the Google / Louis Vuitton ruling. We don’t know how the national courts are going to interpret these rulings. Things are still unclear.’