Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

1. McCarthy Trademark Roundtable Oxford, 14 February 2014Keyword advertising and EU trademark law Prof. Dr. Martin Senftleben VU University Amsterdam Bird & Bird, The Hague

3. Interests involved • TM owner: de facto obliged to pay? • competitor: profiting from brand reputation? • search engine: more attractive service? TM owner competitor role of consumers? search engine

4. Dreams coming true…

5. Double identity identical signs identical goods or services adverse effect on one of the protected trademark functions

6. CJEU, June 18, 2009, case C-487/07, L’Oréal/Bellure • ‘These functions include not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services, but also its other functions, in particular that of guaranteeing the quality of the goods or services in question and those of communication, investment or advertising.’ (para. 58) • recognition of further protected functions, in particular goodwill functions

7. Advertising function • CJEU, 12 November 2002, case C-236-238/08, Google/Louis Vuitton ‘Since the course of trade provides a varied offer of goods and services, the proprietor of a trade mark may have not only the objective of indicating, by means of that mark, the origin of its goods or services, but also that of using its mark for advertising purposes designed to inform and persuade consumers.’ (para. 91)

8. Investment function • CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer ‘In addition to its function of indicating origin and, as the case may be, its advertising function, a trade mark may also be used by its proprietor to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty.’ (para. 60)

9. Communication function • CJEU, #, case C-#, #/# ‘???’ (para. #)

10. …not necessarily with regard to competitors

11. CJEU, 23 March 2010, cases C-236/08, Google/Louis Vuitton ‘...when internet users enter the name of a trade mark as a search term, the home and advertising page of the proprietor of that mark will appear in the list of the natural results, usually in one of the highest positions on that list.’ (para. 97) • advertising function not affected • CJEU shields keyword advertisers from protection following from function theory

12. CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer • no adverse effect on investment function ‘...if the only consequence of that use is to oblige the proprietor of that trade mark to adapt its efforts to acquire or preserve a reputation capable of attracting consumers and retaining their loyalty. Likewise, the fact that that use may prompt some consumers to switch from goods or services bearing that trade mark cannot be successfully relied on by the proprietor of the mark.’ (para. 64)

13. CJEU, 14 November 2013, case C-383/12 P, Environmental Manufacturing/Elmar Wolf

14. Damage to function required taking of ADVANTAGE notsufficient ADVERSE EFFECT required

15. CJEU, 22 September 2011, case C-323/09, Interflora/Marks & Spencer • use of a mark with a reputation in keyword advertising implies taking of an unfair advantage • nonetheless ‘due cause’ defence for informing consumers about alternatives if • not offering mere imitation • neither dilution nor tarnishment • no adverse effect on protected functions

16. …not necessarily with regard to search engines

17. CJEU, March 23, 2010, case C-236/08, Google/Louis Vuitton • ‘The fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses the sign.’ (para. 57) • service provider does not make relevant use: no trademark claim • safe harbour for hosting applicable (para. 114-116)

18. new standard of ‘diligent economic operator’ ‘...it is sufficient, in order for the provider of an information society service to be denied entitlement to the exemption [for hosting], for it to have been aware of facts or circumstances on the basis of which a diligent economic operator should have identified the illegality in question...’ (para. 120) still no general monitoring obligation but own investigations relevant (para. 122) furthermore: limited stay-down obligation CJEU, 12 July 2011, case C-324/09, L’Oréal/eBay

19. Why so restrictive?

20. CJEU, Google/Louis Vuitton, Opinion AG Poiares Maduro ‘Nevertheless, whatever the protection afforded to innovation and investment, it is never absolute. It must always be balanced against other interests, in the same way as trade mark protection itself is balanced against them. I believe that the present cases call for such a balance as regards freedom of expression and freedom of commerce.’ (para. 102)

21. So no expansion at all?

22. Still expansion of protection • double identity protection of goodwill functions for all TMs (CJEU, Interflora) • transparency obligation for keyword advertisers in double identity cases (CJEU, Google/Louis Vuitton) • same transparency obligation in similarity cases (CJEU, Bergspechte) • safe harbour for hosting only for diligent economic operators (CJEU, L’Oréal/eBay)

23. Role of the function theory to an appropriate balancing tool? from a protection expansion tool

24. The end. Thank you!For publications, search for ‘senftleben’ on www.ssrn.com. contact: m.r.f.senftleben@vu.nl