A recent European court decision has caused European companies
to think carefully about the type of keywords they use in their
Google AdWords campaign.
Portakabin Ltd v Primakabin BV
In Portakabin Ltd v Primakabin BV, the court found that
the use of a registered trade mark as a keyword search term
infringed the trade mark owner's exclusive rights if its
use created confusion about the origin of the goods or services
advertised or gave the impression that a reseller of the goods and
the trade mark proprietor are economically linked.
Portakabin is a manufacturer of mobile buildings and the owner
of the registered trade mark PORTAKABIN. Portakabin alleged that
Primakabin (a manufacturer of its own mobile buildings and a seller
and lessor of used mobile buildings including those manufactured by
Portakabin) infringed its trade mark by using PORTAKABIN (and other
similar words) as a keyword in its Google AdWords campaign.
Portakabin argued that Primakabin was able to obtain a higher
ranking in Google's search results.
Primakabin argued that it was not using the term to denote the
origin of its goods and was not gaining an unfair advantage through
its use of the registered trade mark as a keyword. Rather, it was
using the word PORTAKABIN to direct interested parties to its
website, on which it offered for sale legitimate 'used
In an earlier decision (Louis Vuitton v Google), the
European court found that use of a registered trade mark as a
keyword by a third party amounts to infringement if the
advertisement that the keyword is connected to creates an
impression of an economic link between the goods and services of
the advertiser and the trade mark owner, or if the ad is so vague
that a reasonable attentive user cannot tell whether the goods and
services originate from the trade mark owner or a third party.
Primakabin's actual Google advertisement used the term
'used portakabins'. The advertisement was displayed to
Google users who had entered search terms such as
'portokabin' or 'portocabin'. The
advertising link, when clicked on by users, led to web pages on
which Primakabin advertised the sale of second hand goods
originally manufactured and placed on the market by Portakabin, as
well as goods under other trade marks.
Portakabin argued that the advertising link established by
Primakabin was misleading, that Primakabin derived a significant
advantage from the use of the trade mark as a keyword and seriously
damaged the reputation of the PORTAKABIN trade mark.
The EU court's decision
The court decided that a reseller of second hand goods under
another person's trade mark will have difficulty
communicating that information to potential customers without using
that mark. However, the reseller must ensure that the use of the
trade mark does not create an impression that the reseller and
trade mark owner are economically linked. Furthermore, the reseller
must not use the trade mark in a way which is seriously detrimental
to the reputation of the mark.
While the European Court referred the decision back to the court
in the Netherlands for judgement, it nevertheless provided
guidelines to assist the national court in assessing
Primakabin's alleged infringing conduct.
On a practical level, an advertisement must clearly distinguish
that the reseller is not associated with the trade mark owner, or,
more specifically, clearly identify that the trade mark
owner's goods being sold through the reseller's
website are not being sold in association with the trade mark
Australian trade marks and the Google complaints mechanism
Google currently offers Australian trade mark owners
investigative services that allow the owner to lodge a complaint if
a third party is using a registered trade mark as a keyword or in
the text of an advertisement. If the investigations reveal that the
registered trade mark is being used, Google will require the
advertiser to remove the trade marked term from the ad text or
keyword list and will prevent the advertiser from using the trade
marked term in the future.
If you suspect that a third party is using your trade mark to
improve its ranking in the search results, or to promote its own
goods, please contact us regarding the most efficient way to remedy
Swaab Attorneys was the highest ranking law firm and the
13th best place to work in Australia in the 2010 Business Review
Weekly Best Places to Work Awards. The firm was a finalist in the
2010 BRW Client Choice Awards for client service and was named the
winner in the 2009 Australasian Legal Business Employer of Choice
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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