Wintersteiger 3: the legal grounds

AdWords, trade marks and adjacent European Union Member States linked by a common language -- are these not the ingredients of a first-rate piece of litigation? Of course they are, which is why tytoc collie posted two items on a trade mark dispute that is currently on its way before the Court of Justice of the European Union -- Case C-523/10 Wintersteiger. The first post sought further information about the case's factual background and legal issues raised. The second post was a mini-rant about the very short time provided by the UK's Intellectual Property Office for stakeholder consultation. The facts have been presented by a hugely helpful reader here.

 The Kat now returns to this case, taking in turn the two issues previously raised. One helpful friends writes:

"The International Registration for WINTERSTEIGER looks like it could be based on the Austrian mark on which the attack is based (illustrated in colour here).

As for the legal arguments (this is a purely unofficial summary):

The parties fight over whether the Austrian courts have international jurisdiction for an interim injunction against a defendant resident in Germany. Following the ECJ in case C-391/95 (van Uden), such jurisdiction can be based on Brussels I as well as based on national law of the country where the court is situated (Art. 31 Brussels I). Wintersteiger only relies on Art. 5 No. 3 Brussels I [nb Article 5 is reproduced in part, below]. Hence question 1. relating to this article (jurisdiction under Art. 31 Brussels I is not relevant in this case).

Wintersteiger claims infringement of its Austrian trade mark. Such an infringement would generally be considered a tort under Art. 5 No.3 Brussels I. However, it is questionable whether the harmful event - the infringement of the trade mark - in fact occurred in Austria or whether there is any likelihood that it may occur in Austria in future.

Jurisdiction according to Art. 5 No. 3 Brussels I is given (following case law of the Court) if the claimant argues facts which - if they are found to be true - can result in the infringement of a national trade mark (citing 4 Ob 110/01g = ÖBl 2002, 145 - Boss-Zigaretten; similar to BGH I ZR 163/02 = JZ 2005, 736 [Ohly] - Hotel Maritime). In the event that Products 4U had published its ad on Google.at, this criteria would certainly be fulfilled following the criteria which the ECJ laid down in C-236/08 - C-238/08, Google France and Google, ditto in C-278/08, Bergspechte, because the ad does not make it clear that the goods and services which are being advertised do not originate from the trade mark proprietor or from an undertaking which is commercially linked with it, but from a third party.

However, Products 4U have not published their ad on Google.at [the Austrian Google] but on Google.de [the German Google]. Wintersteiger claims only infringement of its Austrian trade mark. It therefore seems that the ad under attack is considered acceptable for the German market - for lack of trade mark rights in Germany. The question is under which conditions the ad is to be considered an infringement of the Austrian trade mark and as such can lead to jurisdiction of the Austrian courts.

The starting point for the answer of this question for the Court is the principle of territoriality of trade mark law: The mark is protected only in that territory, in which it is registered; it can only be infringed in this particular territory. For this reason, with national marks it depends on which conditions of locality ("raeumliche Voraussetzungen") an infringement of a trade mark takes place in the country in which the mark was registered. There may be different views for the issue of an AdWord ad on a "national “ Google website:

(i) It is conceivable that an AdWord ad can only infringe a national trade mark if the Top-level domain of the search engine is the one of the respective country where the mark is registered or (if necessary) the search engine has a generic character (e.g. .com or .org). An argument for this is the country-specific character of the different Google websites: it could be accepted that the advertiser by publishing the ad on a certain country-specific top-level domain makes clear that his ad objectively is not targeted at other countries and that there can consequently be no infringement of trade marks registered in other countries.

(ii) However, the mere possibility to access the website in the country where the trade mark is registered might be sufficient. Reason for this is the global character of the internet: Whoever uses this medium must take into account the fact that its ads are read by a world-wide audience and may therefore infringe the origin function of a trade mark registered in one or more countries. This however would have the consequence that advertisers would have to conduct a world-wide search of trade marks prior to publishing an ad, in order to avoid trade mark infringement. Further, the Court is not aware whether it is technically possible for search engine providers to prevent an ad from being shown in a particular country. If not, a prohibition to publish an ad in one country would in fact have world-wide effect.

(iii) A third solution - which is preferable in the opinion the Court - is to not only require the accessibility of the website but also a further connection between the ad and the country in which the trade mark is registered. One particular point to consider could be the language of the website, and whether the parties are in competition with each other on the market of the country in which the trade mark is registered. In the present case, this would indicate an infringement of the Austrian trade mark and thus jurisdiction of the Austrian courts. A further criterion would, if necessary, be the number of clicks on the relevant Google website. However, the Court does not know whether Google publishes these numbers. It would further be conceivable to consider whether it is proportionate in a particular case to prohibit use of an AdWord, which is protected as a trade mark in one country, on a world-wide basis.

Similar questions were put to the ECJ with regard to the infringement of personality rights in Cases C-509/09 (Federal Supreme Court/BGH) and C-161/10 (Tribunal de Grande Instance de Paris). With the current questions, the Court seeks clarification in a trade mark connection.

Regarding jurisdiction in interim injunction proceedings, Art. 31 Brussels I refers to the national law. In this case, the first instance court would have jurisdiction, because the proceedings are still pending before that court (§ 387 (1) EO). However, in Case C-391/95 van Uden the ECJ noted that a "real connecting link" had to exist "between the subject-matter of the measures sought and the territorial jurisdiction of the Contracting State of the court before which those measures are sought". In the opinion the Court, such a "real connecting link" in cases where a party is requested to refrain from doing something can only exist if either the defendant is based in Austria or if the infringing behaviour has occurred in Austria or could lead to the infringement of rights in Austria. However, in these cases, the Austrian court would have jurisdiction according to Art. 2 or Art. 5 No 3 Brussels I, so that Art. 31 Brussels I referring to national law does not have any independent meaning. A question relating to Art. 31 Brussels I therefore is not necessary.

For these reasons, the Court is asking the ECJ for interpretation of Art. 5 No 3 Brussels I:

"1. In the case of an alleged infringement by a person established in another Member State of a trade mark granted in the State of the court seized through the use of a keyword (AdWord) identical to that trade mark in an internet search engine which offers its services under various country-specific top-level domains, is the phrase "the place where the harmful event occurred or may occur" in Article 5(3) of Regulation 44/2001 ("Brussels I") is to be interpreted as meaning that;

1.1. jurisdiction is established only if the keyword is used on the search engine website the opt-level domain of which is that of the State of the court seized;

1.2. jurisdiction is established only if the search engine website on which the keyword is used can be accessed in the State of the court seized;

1.3. jurisdiction is dependent on the satisfaction or other requirements additional to the accessibility of the website?

2. If Question1.3 is answered in the affirmative: Which criteria are to be used to determine whether jurisdiction under Article 5(3) of Brussels I is established where a trade mark granted in the State of the course seized is used as an AdWord on a search engine website with a country-specific top-level domain different from that of the State of the court seized?"

Article 5 of Brussels I reads as follows:

A person domiciled in a Member State may, in another Member State, be sued:
1. (a) in matters relating to a contract, in the courts for the place of performance of the obligation in question;
(b) for the purpose of this provision and unless otherwise agreed, the place of performance of the obligation in question shall be:
- in the case of the sale of goods, the place in a Member State where, under the contract, the goods were delivered or should have been delivered,
- in the case of the provision of services, the place in a Member State where, under the contract, the services were provided or should have been provided,
(c) if subparagraph (b) does not apply then subparagraph (a) applies;
2. in matters relating to maintenance, in the courts for the place where the maintenance creditor is domiciled or habitually resident or, if the matter is ancillary to proceedings concerning the status of a person, in the court which, according to its own law, has jurisdiction to entertain those proceedings, unless that jurisdiction is based solely on the nationality of one of the parties;
3. in matters relating to tort, delict or quasi-delict, in the courts for the place where the harmful event occurred or may occur;
4. as regards a civil claim for damages or restitution which is based on an act giving rise to criminal proceedings, in the court seised of those proceedings, to the extent that that court has jurisdiction under its own law to entertain civil proceedings; ...

tytoc collie wondered whether, since the UK's Intellectual Property Office could spare only a week for stakeholder comments on questions which take more or less two years to resolve, it would be good to see how other countries handle the consultation issue.  He has since received information from a reader in the Netherlands which suggests that (i) there is no single standard practice; (ii) questions for the Court of Justice are distributed between the departments involved and they seem to decide on their own right which questions the Netherlands should intervene in.