Keyword Advertising and Trademark/Tradename Infringement

In a first leading decision the Austrian Supreme Court has clarified several issues of such cases. The decision is about the trademark and tradename "Wein &  Co." (Wine & Co.), a famous chain of wine stores and wine bars in Austria. A competitor has bought with Goggles 815 keywords, among those "Wein & Co.". The complaint was against the purchaser not Googles.

First, the Supreme Court had to analyze whether "Wein & Co." is descriptive. It found in line with prior case law that "& Co." does not only point to the legal form of the company but is original and uncommon since it also suggests trading with other goods or delivering services in relation to wine.

The Supreme Court stated that the purchase of a trademark of another as search word for search engines is use of that trademark (it is use in advertising which is one of the cases mentioned in Art. 5 para 3d) of the EC Trademark Directive 89/104/EC). The question is whether there is also the danger of confusion.

Danger of confusion was present in that case since the trademark "Wein & Co." was the title of the text which showed up on top the list of hits even when there was an indication that this was an advertisement. The Supreme Court further ruled that even when the trademark "Wein & Co." would not show up on top or within the text pointing to the competitor, there would be a danger of confusion if that hit would be one of the top most since the trademark continues to show up as keyword on top of the screen or even if erased the user would always know that he searched for websites regarding that trademark.

The Supreme Court left one question open since it was not in reach of the claims of the case although it suggested itself by the change agreed between the competitor and Googles to the form its advertisement would show up. The advertisement was now clearly an advertisement without using the trademark and clearly separated from the hits. But the plaintiff is of the opinion that this is still an unfair behaviour prosecutable at least under the Law against Unfair Competition. It uses the trademark as keyword to divert sales from the trademark owner to it using the good will of the trademark in an unfair way for his own business purposes. Furthermore, the use of trademarks of thrids as meta-tags is according to lower?court decisions also a trademark infringement.

So, it seems as if we shall see in the near future a further development regarding the legality or restriction of use of trademark of third parties for keyword advertising and as meta-tags.

Dipl.-Ing. Helmut Sonn