Extract from legal newsletter, IBLS:
The latest advocate general opinion on keywords advertising could, if followed by the European court, have a significant impact on Google’s advertising model. The advocate general’s opinion in Interflora v M&S advises that a trademark owner can take action against an advertiser who attempts to benefit from the attractive force of the proprietor’s mark. This is the first time that such a high court has opined on a dispute between a trademark owner and advertiser, rather than examining Google’s role – but it could deter advertisers from bidding on others’ trademarks.
The advocate general states that trademark use as a keyword can be forbidden under Article 5(2) of the European Trademarks Directive if “the advertiser attempts thereby to benefit from its power of attraction, its reputation or its prestige, and to exploit the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark”.
Yesterday evening a crowd gathered at University College London for a seminar on the future of advertising function of the trademark. Although the speakers were in the dark about the advocate general’s opinion in Interflora, they nevertheless provided insight that takes on a new light today. For instance, this latest opinion continues the court’s flirtation with the advertising function, which could disappoint Annette Kur, one of last night’s speakers and co-author of the recent study into the European trademark system. “Including the advertising function into reasoning under Article 5(2) TMD is unnecessary and dangerous,” she said, advising brand owners to forget about trying to use the advertising function to gain protection beyond the established function of the trademark. “Stick to what you know,” she said.
Trademark owners will have to wait some time for the court’s judgment in Interflora.
See also FT
