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					548          CURRENT INTELLIGENCE                                        Journal of Intellectual Property Law & Practice, 2010, Vol. 5, No. 8


The Board decided not to follow this reasoning, since it
could not agree that                                                        Trade marks
  2.3.2 . . . Article 60 EPC can be interpreted such that the            B From (A) to (B): use of a similar sign in
  inventor or his successor in title has a right to the grant of
  one and only one patent from the EPO for a particular
                                                                         keyword advertising
  invention . . . the fact that the EPC does not contain any                           ¨
                                                                         Bergspechte/Gunter Guni and trekking.at Reisen, Case C-278/
  specific provisions relating to double patenting is decisive            08, Court of Justice of the European Union, 25 March 2010
  ...                                                                    The CJEU has ruled that the proprietor of a trade mark
      ...
                                                                         is entitled ‘to prohibit an advertiser from advertising,
      2.3.4 . . . the contested application cannot be refused
                                                                         on the basis of a keyword identical with or similar to
  under Article 60 EPC for double patenting.
                                                                         that trade mark which that advertiser has, without the
The Board also noted that in the present case, the patent                consent of that proprietor, selected in connection with
from which priority is claimed and the application was, at               an internet referencing service, goods or services identi-




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the time of the oral proceedings before the Board, no                    cal with those for which that mark is registered, in the
longer in the same ownership. For the Board,                             case where that advertising does not enable an average
  2.4 Double patenting as understood in this decision                    internet user, or enables that user only with difficulty,
  requires that the parties of the conflicting patents or                 to ascertain whether the goods or services referred to
  patent applications are identical.                                     therein originate from the proprietor of the trade mark
                                                                         or an undertaking which is economically connected to
The Board was aware that such a unilateral transfer would
                                                                         it or, on the contrary, originate from a third party’.
not be allowable in all Contracting States, but considered
that it was
  2.4 . . . a question of the subsequent national phases, for            Legal context
  which the board is not competent. As a consequence, the                Article 5(1) of Directive 2008/95 to approximate the laws
  application cannot be refused for double patenting, as                 of the Member States relating to trade marks (‘TMD’)
  the parties of the conflicting patent documents are not                 provides that the proprietor of a registered trade mark is
  identical.
                                                                         entitled to prevent third parties not having his consent
The Board also considered that the Enlarged Board of                     from using, in the course of trade:
Appeal decisions on double patenting and divisional                      (a) any sign which is identical with the trade mark in
applications (G 1/05 and G 1/06) were not relevant to the                    relation to goods or services which are identical with
present case:                                                                those for which the trade mark is registered;
  3. . . . Therefore, the present case differs from this situation       (b) any sign where, because of its identity with, or simi-
  in that it concerns double patenting arising from internal                 larity to, the trade mark and the identity or similarity
  priority where the conflicting documents have different                     of the goods or services covered by the trade mark
  filing dates. As a consequence . . . the present decision                   and the sign, there exists a likelihood of confusion on
  is not in contradiction with the decisions G 0001/05 and                   part of the public, which includes the likelihood of
  G 001/06, so that a referral to the Enlarged Board of
                                                                             association between the sign and the trade mark.
  Appeal . . . is not necessary.
                                                                         The Oberster Gerichtshof inquired, in essence, whether
                                                                         Article 5(1) TMD is to be interpreted as meaning that a
                                                                         trade mark proprietor is entitled to enjoin an advertiser’s
Practical significance
                                                                         use of a sign that is similar or identical to a trade mark as
The Board has not seen fit to expand the circumstances in                 a keyword in a paid internet referencing service.
which the EPO will act to prevent double patenting. The Con-
tracting States retain considerable discretion as regards the            Facts
provisions of their own national law on this issue. This case            Bergspechte, an Austrian company, organizes outdoor
also contains an interesting discussion of Article 125 EPC.              tours such as mountain biking, skiing, and alpine climb-
                                                                         ing and owns the Austrian composite trade mark.
David Rogers
Boards of Appeal, EPO, Munich
Email: drogers@epo.org
                                              doi:10.1093/jiplp/jpq077
                              Advance Access Publication 11 June 2010
Journal of Intellectual Property Law & Practice, 2010, Vol. 5, No. 8                CURRENT INTELLIGENCE                           549


  Bergspechte noticed that typing the keywords ‘berg-                    referred to therein originate from the proprietor of the
                        ¨
spechte’ or ‘edi koblmuller’ in an internet search engine                trade mark or an undertaking which is economically con-
resulted in the display, in the sponsored links section, of              nected to it or, on the contrary, originate from a third party.
advertisements of its competitor trekking.at Reisen.                   At first glance, the second in the series of AdWords judg-
Relying on its composite mark, Bergspechte sought an                   ments does not add much to the principles laid down in
injunction against these advertisements. After two                     Google France. However, Google France concerned use of
instances, the case went to the Austrian Oberster Gericht-             signs identical to a trade mark in keyword advertising. In
shof on a point of law. In turn, the Oberster Gerichtshof              Bergspechte, at least one of the contested uses was that of a
stayed the proceedings and referred the matter to the                  sign similar to the trade mark invoked. The judgment there-
CJEU for a preliminary ruling.                                         fore provides guidance in respect to Article 5(1)(b) TMD.
                                                                          In addressing whether keyword advertising is likely to
Analysis                                                               lead to confusion, the CJEU first refers to Lloyd Schuhfab-
The Bergspechte judgment rides (to use CJEU terminol-                  rik Meyer. There the Court maintained that a likelihood




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ogy) on the coat-tails of its Google France judgment                   of confusion constitutes a risk that the public might
which was issued 2 days earlier in Joined Cases C-236 to               believe that the goods or services in question come from
238/08 Google France v Louis Vuitton Malletier.                        the same or economically linked undertakings (Case C-
   In Google France, the Court had already decided on                  342/97, Lloyd Schuhfabrik Meyer v Klijsen, §17). Next, the
some of the main trade mark questions in respect to                    CJEU applied the principles set out in Google France, in
keyword advertising. It had maintained, first, that an                  particular the considerations in respect to detriment to
advertiser purchasing a paid referencing service and                   the function of indication the origin of the goods, to
selecting a keyword to trigger the display of an advertise-            infringement under Article 5(1)(b) TMD.
ment uses that keyword in the course of trade in the sense                Although it is not expressly mentioned, I understand
of Article 5 TMD. Secondly, such use was ‘in relation to               from the Court’s reference to Lloyd Schuhfabrik Meyer
goods or services’, regardless of whether the sign was actu-           that the established principles for the assessment of a like-
ally displayed in the advertisement. Thirdly, the advertis-            lihood of confusion equally apply to use of a keyword in
ing function of a trade mark was not adversely affected by             a paid referencing service. That is to say, whether such a
use of an identical sign in a paid internet referencing                likelihood of confusion, or
service. Finally, whether the function of indicating origin              the impossibility or difficulty to ascertain whether the
of the trade mark is adversely affected by keyword adver-                goods or services referred to therein originate from the
tising depends, in particular, on the manner in which the                proprietor of the trade mark or an undertaking which is
advertisement was presented. That function would,                        economically connected to it or, on the contrary, originate
according to the CJEU, be affected where the advertise-                  from a third party.
ment of which the display is triggered by a keyword iden-              Exists must be appreciated globally, taking into account all
tical to the trade mark                                                factors relevant to the circumstances of the case (ibid, §18).
  does not enable an average internet user, or enables that               One such factor is the relevant public. According to
  user only with difficulty, to ascertain whether the goods or          settled CJEU case law, the relevant public to be taken into
  services referred to therein originate from the proprietor of        account is the average consumer of the goods or services
  the trade mark or an undertaking economically connected              for which the trade mark was registered (Case C-251/95,
  to it or, on the contrary, originate from a third party.             Sabel v Puma, §22). That consumer is deemed to be
In those cases, the trade mark proprietor is entitled to pro-          reasonably well-informed and reasonably observant and
hibit use of a keyword identical to its trade mark in a paid           circumspect (Lloyd Schuhfabrik Meyer, §25 –26).
internet referencing service under Article 5(1)(a) TMD.                   Against this backdrop, it is remarkable that the CJEU
  In Bergspechte, the CJEU held that Article 5(1) TMD                  states, both in Google France and in Bergspechte, that ‘the
must be interpreted as meaning that                                    average internet user’ must be able to distinguish the
                                                                       origin of the goods or services concerned without diffi-
  the proprietor of a trade mark is entitled to prohibit an
  advertiser from advertising, on the basis of a keyword
                                                                       culty. In paragraph 87 of Google France, this statement is
  identical with or similar to that trade mark which that              linked to the essential function of the trade mark in the
  advertiser has, without the consent of that proprietor,              area of electronic commerce, ie the enablement of internet
  selected in connection with an internet referencing service,         users browsing advertisements to distinguish the origin of
  goods or services identical with those for which that mark           the goods and services concerned. In so ruling, the Court
  is registered, in the case where that advertising does not           has seemingly drawn focus to the public of the medium by
  enable an average internet user, or enables that user only           way of which advertisements are delivered, rather than to
  with difficulty, to ascertain whether the goods or services           the target audience of the trade mark.
550         CURRENT INTELLIGENCE                                      Journal of Intellectual Property Law & Practice, 2010, Vol. 5, No. 8


   The way the public processes advertisements on the                 B  Owners of famous brands given wide
internet is relevant. Advocate-General Poiares Maduro                 rights to prevent the use of their trade
had suggested as much in his Opinion in Google France
(at §90 – 91). However, the level of attention of the target
                                                                      marks in comparative advertising
public of a trade mark and that of the average internet                   ´
                                                                      L’Oreal SA and others v Bellure NV and others [2010]
user do not necessarily correspond. This is especially so             EWCA Civ 535, 21 May 2010
where the goods or services for which the trade mark was              In a passionate and critical judgment, the Court of
registered are only purchased after careful examination               Appeal for England and Wales has expressed its regret
(see, eg, Case C-361/04, Picasso, §39 – 40). In those cases,          at having to muzzle advertisers who seek to use well-
the level of attention of the consumer of the goods is                known trade marks to make truthful statements in
likely to be higher than that of an average internet user.            their advertising, having found itself forced to do so by
Paragraph 35 of Bergspechte teaches that the relevant                 the earlier ruling of the European Court of Justice
internet user is normally informed and reasonably atten-              (ECJ) in the same case.
tive. It would have been helpful if the Court had qualified




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this by stipulating that the level of attention of the inter-         Legal context
net user depends on the nature of the goods and services
                                                                                              ´
                                                                      The long-running L’Oreal SA v Bellure litigation explored
for which the trade mark was registered. In any case, the
                                                                      the boundaries of the protection afforded by trade marks
objective characteristics of the goods and services con-
                                                                      with a reputation, particularly so far as they allow a pro-
cerned must be weighed as a relevant factor in determin-
                                                                      prietor to prevent a third party from taking ‘unfair advan-
ing whether the advertisement causes or is likely to cause
                                                                      tage’ of its reputation in those marks. At its conclusion,
confusion in respect to the origin of those goods and ser-
                                                                      the case focused on the ability of a proprietor to prevent
vices. Any other interpretation would in my view lead to
                                                                      its well-known mark being used in what was effectively
an unjustified discrepancy between the assessment of
                                                                      comparative advertising, with the Court of Appeal openly
infringement by way of internet keyword advertising and
                                                                      frustrated at having to implement an ECJ ruling which
by way of its brick-and-mortar counterparts.
                                                                      may make it difficult in the future for advertisers to carry
                                                                      out seemingly legitimate comparative advertising.
Practical significance
In Bergspechte, the Court has unsurprisingly stated that              Facts
use of a sign that is similar rather than identical to a                    ´                                ´
                                                                      L’Oreal markets fine fragrances like Tresor and Miracle. The
trade mark in internet keyword advertising can be prohib-             defendants produced much cheaper ‘smell-alikes’, with com-
ited by the trade mark proprietor when that advertising               parable smells. They marketed them in sometimes similar
leads or is likely to lead to confusion. The conditions for           bottles and packaging that gave a ‘wink of an eye’ to that
infringement under Article 5(1)(b) TMD are brought in                                 ´
                                                                      used by L’Oreal’s brands. The defendants also provided
line with those set out in Google France for detriment to             retailers with comparison lists which simply listed the trade
the function of designating origin under Article 5(1)(a)                                      ´
                                                                      marked names of L’Oreal’s perfumes besides the names of
TMD. Thus an advertiser’s use of a similar sign as a                                                                   ´
                                                                      the corresponding smell-alike perfumes. L’Oreal attacked
keyword infringes where the advertising does not enable               both the similar packaging and the use of the comparison
an average internet user, or enables that user only with              lists, complaining that the reputations of its luxury brands
difficulty, to ascertain whether the goods or services                 were being sullied by association with cheaper copies.
referred to in it originate from the proprietor of the trade             This judgment addresses only the comparison lists, the
mark or an undertaking which is economically connected                packaging issues having been dealt with during the course
to it or, in contrast, originate from a third party. While            of this case’s reference to the ECJ. The Court of Appeal,
both Bergspechte and Google France have provided useful               led by Lord Justice Jacob, applied the ECJ’s findings to the
guidance to trade mark proprietors and internet adverti-              facts summarized above.
sers, it is hoped that the CJEU will further refine the prin-
ciples in the references that are still pending before it in          Analysis
respect to the AdWords service.                                       There were three points for the Court of Appeal to make
                                                                      findings on:
Kristof Neefs                                                                                ´
                                                                      1. Did the use of L’Oreal’s marks in comparison lists fall
Altius, Brussels                                                         within Article 5(1)(a) of Directive 89/104 (now Direc-
Email: kristof.neefs@altius.com                                          tive 2008/95, the ‘TM Directive’) – the ‘identical mark/
                                           doi:10.1093/jiplp/jpq068      identical goods’ Article – and so prima facie infringe
                             Advance Access Publication 3 June 2010           ´
                                                                         L’Oreal’s marks?

				
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