But I Still Havent Found What Im Looking For

“But I Still Haven’t Found What I’m Looking For” – The ECJ and The Use of
Competitor’s Trademark in Search Engine Keyword Advertising
Tavaramerkki – Hakukoneet – Avainsanat – EU-tuomioistuin – Google – Tavaramerkin

funktiot – Sekoitettavuus – Alkuperäfunktio – Mainosfunktio – Trademark – Keyword
– Google – Search Engine – Advertising - Preliminary Reference – Preliminary Ruling -
ECJ – Function of Indicating Origin – Advertising Function
Abstract: ............................................................................................................................... 3
1. Introduction: Googlers, Trademarks and Thieves ............................................................... 4
1.1 The Concept ................................................................................................................ 4
1.2 Actionable Confusing and Non-Confusing Use ............................................................ 6
1.3 The ECJ and Keyword Advertising in Europe .............................................................. 7
2. The Seminal Google France .............................................................................................. 9
2.1 Preliminary Observations on the Basis of the Trademarks Directive ........................... 11
2.2 The Relevant Trademark Functions ............................................................................ 13
3. Adverse Effect on the (Critical) Function of Indicating Origin in Keyword Advertising:

Birth of the Google France Consumer Confusion Standard ................................................. 14
3.1 Preliminary Remarks on “Normally Informed and Reasonably Attentive Internet Users”
........................................................................................................................................ 15
3.2 BergSpechte: The Google France Consumer Confusion Expands to Article 5(1)(b) ... 16
3.2.1 National Court in BergSpechte: The Google France Consumer Confusion Standard
Utilized to Require Explicit Disclaimers ...................................................................... 17
3.3 Portakabin: The Google France Consumer Confusion Standard Expands to Articles 6
and 7 ............................................................................................................................... 18
3.4 Advocate General on L’Oréal v. eBay: The Google France Consumer Confusion
Standard Revisited ........................................................................................................... 20
3.5 Some Concluding Remarks on the Google France Consumer Confusion Standard ..... 21
3.5.1 Advertisers and Legal Certainty........................................................................... 21
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3.5.2 Uncertainty about the “Normally Informed and Reasonably Attentive Internet
Users”: Countermeasures ............................................................................................. 21
3.6 Advocate General Jääskinen on Interflora: The Google France Consumer Confusion
Standard and “Commercial Networks”............................................................................. 23
3.6.1 Interflora: Challenges Ahead for the ECJ on the Google France Consumer
Confusion Standard ...................................................................................................... 24
3.6 The ECJ’s Preliminary Reference Procedure and the Google France Consumer
Confusion Standard ......................................................................................................... 26
4. Google’s Policy Conclusions post-Google France ........................................................... 27
5. Infringing Use of Competitor’s Trademark Not Liable to Confuse the User in Keyword
Advertising ......................................................................................................................... 29
5.1 Google France: the ”Irrelevant” Advertising Function Emerges (Almost) Out of
Nowhere .......................................................................................................................... 29
5.1.1 The Curious Application of the Advertising Function .............................................. 31
5.2 Article 5(2) and the Question of Dilutive Use of Reputable Trademarks ..................... 33
5.2.1 L’Oréal and Others: Riding on the Coat-tails ...................................................... 35
5.2.2 Google France and Article 5(2): Marketing of Imitations Constitutes Free-Riding
.................................................................................................................................... 36
5.3 Advocate General on Interflora: Dilution in Keyword Advertising ............................. 38
5.3.1 Advocate General on Interflora: Free-Riding in Keyword Advertising Revisited . 38
5.4 The ECJ’s Preliminary Reference Procedure and the Non-Confusing Use of
Competitor’s Trademark in Keyword Advertising ............................................................ 41
6. A 2010s Proposal For Legal Certainty ...................................................................... 42
BIBLIOGRAPHY ............................................................................................................... 44
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Abstract:
When it comes to using competitor’s trademark in keyword advertising, legal certainty on its
permissibility has hitherto been lacking within the EU. The European Court of Justice as the
supreme interpreter of EU law has recently delivered its first corresponding preliminary
rulings which were expected to bring about clarification. This paper critically assesses those
rulings with an aim to identify the current de facto state of the law. Use of competitor’s
trademark is now allowed per se. Two potentially actionable situations need to be identified.
Firstly, the use amounts to trademark infringement when the advertisement does not enable
“normally informed and reasonably attentive internet users” to distinguish whether the ad
emanates from an entity economically linked with the trademark. The problem of this
“Google France consumer confusion standard” is its abstractness: when should the
advertiser explicitly dissociate itself in the ad from the trademark used? Secondly, use of
competitor’s trademark can infringe reputable marks without any confusion for the user: the
exact conditions for such a situation remain somewhat uncertain. These findings are further
underlined following the examination of the rulings from the point of view of the elusive
division between “interpretation” and “application” in the preliminary reference procedure
involving the ECJ and the national courts. While the longed-for legal certainty has still not
been found, more concrete upcoming rulings can fix the situation.
Electronic copy available at: https://ssrn.com/abstract=1847975

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1. Introduction: Googlers, Trademarks and Thieves
1.1 The Concept
Anyone who has googled has just about inevitably noticed advertisements 1 triggered by the
content of the actual search query. People frequently google registered trademarks, for
diverse reasons. This practice tends to trigger advertisements from various entities. This is
due to the fact that companies often select trademarks they do not own as the keywords to
trigger their ads.2
Let us approach some variations by conducting a Google search for “Toyota Yaris”, a vehicle
we are supposedly interested in purchasing. Ads from, for example, used cars sellers, a car
magazine and an automobile comparison site appear.3 Similar methods of using another’s
trademark are common in keyword advertising.
However, they differ from directly competitive use4, meaning use where a competitor that
operates in the same market with the trademark proprietor (and with no attachments to the
latter) is attempting to provide the user with an alternative product fulfilling the same need
instead of the one originally searched by the user. Illustratively the “Toyota Yaris” example
also leaves us faced with an ad titled “Suzuki Swift”.
“Suzuki Swift
The New Stylish Suzuki Swift
Designed For Life From Just £10210!
www.suzuki4.co.uk”
1 Google’s ad system is called AdWords. Google’s total advertising revenues in 2010 were
$28 billion. Google Investor Relations: 2010 Financial Tables
http://investor.google.com/financial/tables.html Other search engines operate their respective
systems. adCenter is Microsoft’s system in relation to the Bing search engine. Yahoo’s system
is called Yahoo! Search Marketing. Yandex is the Russian market leader and its system is
called Yandex.Direct.
2 Another question, and one that will turn out crucial from the point of view of this article, is
whether the average googler grasps that fact.
3 Obviously, none of these operators owns the trademark “Toyota” or “Toyota Yaris”.
4 The expression and concept of “direct competitor” providing ”alternative goods” is also
used by Advocate General Jääskinen on his L’Oréal v. eBay opinion. Para 102: “In my
opinion that analysis is applicable also in situations where the relevant advertising links are
not those of direct competitors of the proprietor of the trade mark offering alternative goods
but those of electronic marketplaces offering an alternative source of the same goods covered
by the trade mark with respect to the distribution network of the trade mark proprietor.”
[Emphasis added.]

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Clicking on the link directs the user to Suzuki’s site. In other words, Suzuki has aimed for
Google users to see its ad for an alternative product instead of a Toyota Yaris upon a “Toyota
Yaris” search by the user.
Another example: Google search in Finland for “instrumentarium”, the name of a major
eyeglasses store chain in the country, results in the advertisement for Lensway (on the right,
under the grey headline “Mainokset” (“Ads”)), an online eyeglasses store which ships the
items from its Member State of establishment, the Netherlands.
A Google AdWords ad consists of a title and two rows of ad text. An advertiser can use a
maximum of 95 characters for these purposes. The last row consists of a website URL the
maximum for which is 35 characters.
Obviously, the concept entails vast opportunities for a huge amount of operators in practically
all fields of commerce. As an AdWords advertiser only pays for actual clicks, cleverly
targeted visibility can be generated within a reasonable budget. This provides a tempting
opportunity for example SMEs to try to divert the potential consumer to select their product
instead of that of their (often more powerful and well-known) competitor.
The strategy also has a clear EU internal market dimension: it is especially useful for
companies aiming to penetrate the markets in Member States outside their own. By selecting
the trademark of a company already well-known in that country, they can efficiently decrease
the handicap resulting from their obscurity. This, in turn, is beneficial for European
consumers who are able to find their way to a possibly more suitable option, in financial or
some other terms, than the one they were looking for in the first place.5
5 Advocate General Jääskinen on Interflora para 45: “(…) one of the blessings of the internet
is precisely that it greatly enhances consumers’ possibilities to make enlightened choices
between goods and services.”

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While these arguments might sound inviting for the competitors and consumers, many
trademark proprietors are surely only interested in preventing such use. Indeed, two
trademark law arguments justifying legal intervention spring up.
1.2 Actionable Confusing and Non-Confusing Use
Firstly, trademark law has traditionally been founded on the prevention of use of the
trademark in a manner liable to confuse the consumer about the source of the products in
question. It is a relatively challenging task to invent arguments as to why at least ads which
falsely and purposefully claim to represent the trademark that triggered them should not be
prohibited. Obvious occurrences of this phenomenon are ads that read for example “Toyota
Yaris” and nevertheless lead to sites selling entirely different cars. In my view an ad can also
be equally deceptive without even resorting to mentioning the trademark in question at all:
such a scenario could arise through ad texts such as “We have the exact product you just
searched for!”.
In fact, one could claim that all uses of competitor’s trademark in keyword advertising entail
such a deceptive element: this argument is based on the assumption that users expect the
advertisements to necessarily represent the trademark (or at least a reseller or a similar entity
somehow affiliated with the mark) they had googled. Such a stance would suggest a necessity
for explicit disclaimers in the ads, like the one in this hypothetical example:
Suzuki Swift
NOT A TOYOTA YARIS AD!
Designed For Life From Just £10210!
www.suzuki4.co.uk
On the other hand, another school of thought would strongly disagree with such a bleak
assumption about people’s ability to operate in the web in the 2010s; in their view not
everything has to be explicitly underlined.
Anyway, the relevant legal challenge clearly emerges: how to define the actual standard as to
when a given keyword ad should be deemed as confusing enough to be prohibited—or at
least to require it to contain such disclaimers.
I suspect that many readers think that I am already missing the point; that the question is not
really even about the consumer confusion. Looking the issue from this angle, all advertisers
using this strategy can be perceived as being parasites unfairly reaping the fruits from the
investments made, the demand created and the goodwill gathered by its competitor. Use of
competitor’s trademarks could thus in principle be banned altogether from the perspective of

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unlawful “free-riding”6 as well. This concept is one variation of a phenomenon called

dilution, meaning trademark use not liable to confuse the user but nevertheless actionable.7
The basic arguments are now on the table. How does it work out in practice; what does “the
law” say?
1.3 The ECJ and Keyword Advertising in Europe
At the level of material legislation, namely the supposedly harmonized EU trademark law, the
treatment of this 21st century marketing phenomenon is ambiguous regarding both of these
viewpoints. Glaring8 at the Trademarks Directive9 (or on any previous case law) does not
provide clear answers10 whether the use of competitor’s trademark 11 is in general lawful, and
if the answer is in the affirmative, on which conditions. Unsurprisingly, European case law 12
6 From a wider theoretical perspective, perceiving trademark law this way shifts the focus
from protection of the consumers to the unfair advantage taken by the third party per se, even
without actual measurable harm having been caused to the trademark proprietors. It is also
part of the economic theory conundrum often connected to trademark law as to where to draw
the line regarding the so-called positive externalities, meaning benefits enjoyed by a third
party outside any economic transaction. See Gangjee & Burrell MLR 2010
7 The classical brick-and-mortar counterargument, in turn, would be to claim that the act is
no different from a supermarket placing its cheap store brand next to the famous one. The
practice is common and widely accepted.
8 The directive’s wording, obviously deriving from the 1980s, is one clearly based on
traditional, physical commercial environment.
9 “The Trademarks Directive”, First Council Directive 89/104/EEC of 21 December 1988 to
approximate the laws of the Member States relating to trade marks, as amended by the
Agreement on the European Economic Area (EEA) of 2 May 1992. 89/104/EEC has since
been repealed. In the new Directive 2008/95/EC of 22 October 2008 to approximate the laws
of the Member States relating to trade marks (OJ L299, 08/11/08) the provisions in question
have remained unchanged. For clarity purposes neither the synonymous articles from Council
Regulation (EC) No 40/941 of 20 December 1993 on the Community trade mark OJ L 011,
14.1.1994, p. 1, are mentioned in connection to their corresponding articles in the Trademarks
Directive. The preliminary rulings have concerned also the Regulation on the Community
Trademark 40/94/EC in tandem with 89/104/EEC, the content of which is essentially the
same. For clarity purposes, I refer solely to the Trademarks Directive, and not to the
Community Trademark Regulation in this article.
10 Moreover, it is self-evident that member states’ trademark laws, as implementations of the
directive, are equally non-conclusive on the matter.
11 In this article, expressions “use of the trademark”, “use of the name of the trademark” and
“use of a sign identical with trademark” are used interchangeably.
12 In practice, disputes on keyword use of another’s trademark rarely lead to court
proceedings, as the advertisers tend to cease from the activity upon infringement claims made
by the proprietor.

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remained inconsistent and unpredictable throughout the past decade both within and across
Member States.13
As a consequence of these factors, European keyword advertisers simply could not have
properly known which strategies involving use of competitor’s trademarks—if any— are
lawful. This is especially lamentable in the sense that the entire Europe googles14 and
Google’s system per se is identical throughout the EU, thus arousing hopes for also a simple
EU-wide solution.
The diverse keyword advertising case law constitutes a textbook example of circumstances
where uniform interpretation requires15 national courts of Member States to refer questions on
the interpretation of EU statutes to the European Court of Justice. Accordingly, the first
preliminary references were made in 2008. And finally, during 2010, the supreme instance for
the interpretation of EU law has delivered its first much-awaited preliminary rulings on the
subject.
The ECJ’s keyword advertising rulings have hitherto been, in chronological order, Google
France16, BergSpechte, Eis.de17, Portakabin and the Advocate General’s opinions in L’Oréal
13 For example in France the courts tended to find the keyword use of another’s trademarks
unlawful. In Germany, another member state with plenty of case law, the courts generally
adopted an opposite stance. See, inter alia, Schirmbacher, Martin Dr. & Reinholz, Fabian
“The Use of a Third Party’s Trademarks as a Keyword Trigger in Automated Advertising
Systems of Internet Search Engines – Case Law in Europe and Germany”, Convergence 141
2008
14 According to statistics the original source for was NetApplications.com, Google’s market
share in Europe is 94.89 percent. Greene, Jay: “Why Microsoft is taking on Google in
Europe”, cNET 31.3.2011, visited 12.4.2011.
15 Article 267 of the Treaty on the Functioning of the European Union: (ex Article 234 TEC)
The Court of Justice of the European Union shall have jurisdiction to give preliminary rulings
concerning: (a) the interpretation of the Treaties; (b) the validity and interpretation of acts of
the institutions, bodies, offices or agencies of the Union; Where such a question is raised
before any court or tribunal of a Member State, that court or tribunal may, if it considers that
a decision on the question is necessary to enable it to give judgment, request the Court to give
a ruling thereon. Where any such question is raised in a case pending before a court or
tribunal of a Member State against whose decisions there is no judicial remedy under national
law, that court or tribunal shall bring the matter before the Court. If such a question is raised
in a case pending before a court or tribunal of a Member State with regard to a person in
custody, the Court of Justice of the European Union shall act with the minimum of delay.
[Emphasis added.]
16 Despite the actual defendant being Google, not the advertiser, the ruling was highly
relevant as regards the advertiser’s liability as well.
17 C-91/09: Reference for a preliminary ruling from the Bundesgerichtshof (Germany)
lodged on 6 March 2009 — Eis.de GmbH v BBY Vertriebsgesellschaft mbH, Official Journal
C 129 , 06/06/2009 P. 0004 – 0004. In the national case behind Eis.de, BBY

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v. eBay and Interflora.18 Together they form an unavoidable source of law in this particular
subject. They also constitute a valuable target group for the examination on how one of
Europe’s foremost de facto policymakers in the 2010s maneuvers with unprecedented legal
problems created by new technology.
The purpose of this paper is not merely to provide a review of each of the rulings per se; I
also aim to identify the current de facto state of the law on permissible use of competitor’s
trademarks in keyword advertising. Obviously, criticism and propositions regarding the
direction of the case law’s development will be provided where necessary. Special attention
will be given to the approaches the ECJ has chosen in its argumentation, especially regarding
the division of tasks in the preliminary reference procedure.
As the focus is on the advertiser, the liability of the search engine as the provider of the
advertising platform is largely excluded from this paper.
2. The Seminal Google France
Before entering into the ECJ’s argumentation as regards the aforementioned problems on
confusing and non-confusing use in chapters three and five respectively, I find it necessary to
make certain preliminary remarks about the Google France case.
Google France was in fact a combination of three French cases, all causing a set of similar
preliminary questions to be posed by the French Cour de cassation. 19 The first and most
Vertriebsgesellschaft owned the trademark “Bananabay” which Eis.de, also a German player
in the erotic industry, had selected as the keyword to trigger its advert. On the day following
BergSpechte, the ECJ opted to deliver merely an order of the court for this case —instead of
any actual answers (Article 104(3), Rules of Procedure of the Court of Justice of the
European Union). As the referred preliminary question was in essence identical to
BergSpechte, re-answering it per se would not have shed any additional light on the matter.
Hence, the ECJ basically instructed the German court to check Google France and
BergSpechte for answers. However, Eis.de can now be perceived as a missed opportunity, due
to the fact illustrated by the Austrian BergSpechte ruling, namely that the answers provided in
Google France have proven insufficient.
18 Ergo, the uniting factor in these cases was the advertiser’s selection of the name of the
trademark which it did not own as its ad-triggering keyword in Google’s AdWords
advertising system.
19“Google France”, Joined Cases C-236/08, C-237/08, C-238/08: Judgment of the Court
(Grand Chamber) of 23 March 2010, Google France, Google, Inc. v Louis Vuitton Malletier
(C-236/08), Viaticum SA, Luteciel SARL (C-237/08), Centre national de recherche en
relations humaines (CNRRH) SARL, Pierre-Alexis Thonet, Bruno Raboin, Tiger SARL (C-
238/08). While the defendant was the referencing service provider Google, one of the
questions posed by the Cour de cassation (in C-238/08) allowed the Court to inspect the
liability of the advertiser too. Google France para 41: “Does the reservation by an economic

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famous case C-236/08 concerned the luxury brand Louis Vuitton not content with the way its
trademark was allowed to be used as a keyword. When a user conducted searches such as
“louis vuitton” or “louis vuitton imitations”, ads leading to sites offering imitation versions of
Vuitton’s products appeared, proclaiming questionable and blunt (but not confusing per se)
messages such as “Louis Vuitton copies”. 20
Google France received a lot of attention before and after the ECJ’s March 2010 ruling. It
was preceded by the opinion of the Advocate General Miguel Poiares Maduro21 who
operator, by means of an agreement on paid internet referencing, of a keyword triggering, in

the case of a request using that word, the display of a link proposing connection to a site
operated by that operator in order to offer for sale goods or services, and which reproduces or
imitates a trade mark registered by a third party in order to designate identical or similar
goods, without the authorisation of the proprietor of that trade mark, constitute in itself an
infringement of the exclusive right guaranteed to the latter by Article 5 of [Directive
89/104]?”
20 Google France para 37 and 101. In the second case C-237/08 company called Viaticum
owned several travel-related trademarks such as “Bourse des Voyages”. In the third case C-
238/08, the applicant was EuroChallenges, a so-called matrimonial agency which offered,
inter alia, Russian and Asian companions principally for French men. Also in both of these
cases the competitors of these undertakings had obtained these trademarks as keywords that
triggered their ads. Google France paras 33 to 36 and 38 to 40.
21 First, in September 2009, now former Advocate General Maduro delivered his non-
binding albeit influential opinion. Maduro envisaged the significance of the matter for the
future of internet, linking and search engines and did not shy away from using terms like
freedom of speech or freedom of commerce. Advocate General Maduro on Google France,
inter alia, paras 102 to 113. For criticism on this stance as part of a wider criticism towards
using freedom of expression and similar human rights arguments in trademark law
argumentation, see Burrell, Robert and Gangjee, Dev: “Trade Marks and Freedom of
Expression: A Call for Caution” IIC 2010, 41(5), 544-569, p.569. Burrell and Gangjee argue
“To conclude with a tangible example, we believe that the Advocate General's attempt in
Google to justify referential uses by online commercial actors in extraneous free speech terms
is well intentioned but misplaced. The Opinion seems to presume that certain unauthorised
referential or descriptive uses, by search engines or advertisers using their services, clash
with the legitimate interests of trade mark owners. It then resorts to the language of Freedom
of Expression and Freedom of Commerce to balance legitimate interests on both sides. Our
approach is to question why trade mark owners should be given such expansive rights in the
first place and whether the legitimacy of these interests is justifiable.” Advocate General
Jääskinen follows in his L’Oréal v. eBay opinion on the footsteps of Maduro by making
similar references to human rights, namely Article 10 of the ECHR and Article 11 of the
Charter of Fundamental Rights in the EU. (Advocate General Jääskinen on L’Oréal v. eBay
paras 47 to 49. Para 49: “It should not be forgotten that the listings uploaded by users to
eBay’s marketplace are communications protected by the fundamental rights of freedom of
expression and information provided by Article 11 of Charter of Fundamental Rights of the
EU and Article 10 of the European Convention on Human Rights.[FN24]” (Footnote 24 of
the opinion: “See opinion of Advocate General Alber in Case C-71/02 Karner [2004] ECR
I-3025, point 75, and European Court of Human Rights: Markt Intern Verlag GmbH and

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concentrated almost exclusively on Google’s liability, as opposed to that of the advertiser.22

Therefore that opinion is not examined extensively in this paper.
2.1 Preliminary Observations on the Basis of the Trademarks Directive
The legal basis for the trademark proprietor’s entitlement to prevent infringing use of the
mark is Article 5(1) of the Trademarks Directive. Hence, using competitor’s trademark in a
manner not in compliance with it constitutes actionable trademark use.
Thus, the first question in Google France the ECJ had to evaluate was whether the selection
of another’s23 trademark as an ad-triggering keyword even amount to using a trademark
within the meaning of the Trademarks Directive? If the answer had been "no”, the later
components of the examination on actionable use would have turned out redundant: all uses
of another’s trademark would have been deemed allowed from the point of view of EU
trademark law.
Google France concerned specifically provision (a) of the Article which concerns the
commercial use of identical sign in relation to the trademark.24 The wording of (b) concerns
the use of a similar sign. 25
Klaus Beermann v. Germany, 20 November 1989, Series A, No 165, paragraphs 25 and 26,
and Casado Coca v. Spain, 24 February 1994, Series A, No 285-A, paragraphs 35 and 36”.)
Like Maduro, Jääskinen merely proclaims the importance of these freedoms yet does not
elaborate further explicitly on them.
22 Advocate General Maduro in Google France, inter alia para 153: ”[…]the Court has not
been asked about the use of the trade mark in the ads […]”.
23 In line of the remarks made in the introduction, perhaps it is necessary to underline that
these stipulations made by the ECJ thus apply to all variations of using another’s trademark
in keyword advertising, not merely the use by a direct competitor.
24 Strictly speaking, 5(1)(a) deals with a situation where another operator commercially uses
the trademark literally in its exact registered form. (The ECJ has held that “a sign is identical
with a trade mark only where it reproduces, without any modification or addition, all the
elements constituting the trade mark or where, viewed as a whole, it contains differences
which are so insignificant that they may go unnoticed by an average consumer.” [Emphasis
added.] Case C-291/00 LTJ Diffusion [2003] ECR I-2799 para 54, BergSpechte para 25,
Portakabin para 47, Advocate General Jääskinen on L’Oréal v. eBay para 61). Article
5(1)(b), in turn, concerns circumstances where merely a similar sign is being used. The
distinction between (a) and (b) has turned out not crucial in AdWords environment as the
Court’s approach on both is very similar; this relationship is examined later in this comment.
25 In the present context, this of course concerns the question whether the advertiser selects
as keywords an identical wording vis-à-vis the trademark in question or merely a similar one,
as the defendant had done in BergSpechte. The relatively insignificant division between (a)
and (b) will be revisited later on in this paper in connection to that ruling.

12
5(1). The registered trade mark shall confer on the proprietor exclusive rights therein.
The proprietor shall be entitled to prevent all third parties not having his consent from
using in the course of trade:
(a) any sign which is identical with the trade mark in relation to goods or services which
are identical with those for which the trade mark is registered;
(b) any sign where, because of its identity with, or similarity to, the trade mark and the
identity or similarity of the goods or services covered by the trade mark and the sign,
there exists a likelihood of confusion on the part of the public, which includes the
likelihood of association between the sign and the trade mark.
Thus, the conditions for actionable trademark use26 under Article 5(1)(a) contain:
Use of a sign identical with the trademark in question

1.in the course of trade
2.in relation to goods or services identical to those of the trademark.
Firstly, the ECJ answered in the affirmative on whether the use of the trademark in keyword
advertising constitutes use “in the course of trade”: the advertiser does use “the sign in the
context of commercial activity” since the sign selected as a keyword is the means to trigger
the advertising link to the sites selling products of the advertiser. 27
Then the ECJ proceeded to verify28 whether the second requirement of use “in relation to
goods or services” was fulfilled by keyword use.29 As use of trademarks in comparative
26 The ECJ also recognizes that use of another’s trademark can be deemed illegal from the
point of view of other areas of law. (It mentions, inter alia, law on unfair competition.)
(Google France para 87).
27 Google France paras 51 and 52. However it held that while the actual defendant Google
“operates in the course of trade”, it does not “use” the trademarks in the course of trade
within the meaning of Article 5(1)(a) upon permitting advertisers to select the terms in
question as keywords (Google France para 55) (For this part the ECJ deferred from Advocate
General Maduro’s opinion. (Advocate General Maduro on Google France para 77)) Put
differently, this is where Google, as opposed to the advertiser, was found not to have
committed trademark infringements. Hence, the ECJ’s all subsequent remarks were relevant
only as regards the use of another’s trademark as a keyword by the advertiser alone.
28 Google France para 60. See also C-48/05 Adam Opel AG v Autec AG, [2007] ECR I-1017
para 28 and 29, C-533/06 O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK
Limited, [2008] ECR I-10273 para 34.
29 First the Court pointed out to the example list of preventable actions in Article 5(3) of the
Trademarks Directive according to which the exclusive right indeed can be used to prohibit
using the sign in advertising. (Google France para 61, Advocate General Maduro on Google
France para 63.) Google had submitted that the paragraph in question did not apply here as
the actual text of the ad in two of the three cases (those not involving Louis Vuitton as the
applicant) did not contain the supposedly infringed trademark although the keyword
obviously did. (Google France para 64). The Court set aside this argument by referring to,
inter alia, the fact that the list mentioned in 5(3) was “drawn up before the full emergence of
electronic commerce and the advertising produced in that context” (Google France para 66)

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advertisements30 has been recognized as “use” in the past31, it held, in essence, that when a
competitor’s AdWords strategy purports to make the user aware of an alternative product
(e.g. a Suzuki instead of a Toyota, largely the scope of this paper), “there is a use of that sign
in relation to the goods or services of that competitor”—irrespective whether the trademark is
mentioned in the ad or not.32
Hence, the ECJ came to the conclusion that a keyword advertiser is indeed using the
competitor’s trademark within the entire meaning of Article 5(1)(a). It was thus appropriate to
continue to the final part of the investigation on whether use of another’s trademark by a third
party constituted actionable trademark use.
2.2 The Relevant Trademark Functions
As an earlier case law expansion to the wording of Article 5(1)(a), a further prerequisite for
actionable trademark use is the adverse effect caused by that use to the functions of the
trademark.33 It is precisely these functions by means of which we can advance to the
questions of actionable confusing or non-confusing use in the chapters three and five.
In Google France the ECJ proclaimed—as it will unravel: partly arbitrarily—that two such
relevant functions34 exist in “the present context” of keyword advertising using another’s
trademark:
1. the function of indicating origin.

2. the advertising function
Article 5(3) of the Trademarks Directive: The following, inter alia, may be prohibited under
paragraphs l and 2: (a) affixing the sign to the goods or to the packaging thereof; (b) offering
the goods, or putting them on the market or stocking them for these purposes under that sign,
or offering or supplying services thereunder; (c) importing or exporting the goods under the
sign; (d) using the sign on business papers and in advertising [Emphasis added].
30 In Google France the ECJ did not examine whether keyword use amounts to comparative
advertising. See Google France para 71.
31 Google France para 70, O2 para 35, 36, 42, L’Oréal and Others para 52 and 53.
32 Google France para 69. The Court also applied the interpretation to situations where the
user is intentionally being attempted to mislead about the origin of the products, in case of
counterfeited items or other unlawful replicas (Google France para 72, Céline para 23, order
in UDV North America para 47).
33 Portakabin para 29, Google France para 76, C-206/01 Arsenal Football Club plc v
Matthew Reed, [2002] ECR I-10273 para 51, L’Oréal and Others para 58 and 59, Céline para
16.
34 Google France para 81, BergSpechte para 32, Portakabin para 31.

14
The advertising function, examined in chapter five in further detail, is related to the question
of actionable non-confusing use. Logically, the function of indicating origin is the ECJ’s way
to maneuver the question on consumer confusion.
3. Adverse Effect on the (Critical) Function of Indicating Origin in Keyword

Advertising: Birth of the Google France Consumer Confusion Standard
This function was defined in Google France (consistently with the ECJ’s previous case law35)
as enabling the user to distinguish the goods or services in question from those deriving from
another origin. 36 The ECJ thus proceeded to define when, in general, the use of competitor’s
trademark in keyword advertising can be perceived as impairing this function:
84. The function of indicating the origin of the mark is adversely affected [in keyword
advertising] if the ad does not enable normally informed and reasonably attentive
internet users, or enables them only with difficulty, to ascertain whether the goods or
services referred to by the ad originate from the proprietor of the trade mark or an
undertaking economically connected to it or, on the contrary, originate from a third
party. [Emphasis added.]
Thus, according to the ECJ, if the advertiser is not affiliated with the proprietor of the
trademark used as a keyword, the ad must inform the consumer about the fact in a sufficiently
clear manner.37 This inescapably penetrates to the content of the actual ads, although
naturally always in relation to their respective triggering keywords.
As a further, crucial piece to this brand-new Google France consumer confusion standard, the
ECJ concluded:
89. In the case where a third party’s ad suggests that there is an economic link between
that third party [= the advertiser] and the proprietor of the trade mark, the conclusion
must be that there is an adverse effect on the function of indicating origin. [Emphasis
and the part in brackets added.]
90. In the case where the ad, while not suggesting the existence of an economic link,
is vague to such an extent on the origin of the goods or services at issue that normally
informed and reasonably attentive internet users are unable to determine, on the basis
of the advertising link and the commercial message attached thereto, whether the
advertiser is a third party vis-à-vis the proprietor of the trade mark or, on the
35 See Arsenal Football Club para 51, Adam Opel para 21.
36 Google France para 82, C-39/97 Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc.
[1998] ECR I-5507 para 28, C-120-04 Medion AG v Thomson multimedia Sales Germany &
Austria GmbH, [2005] ECR I-8551 para 23.
37 Whereas the expression “likelihood of confusion” (as in the wording of Article 5(1)(b) of
the Trademarks Directive) is not mentioned, the standard set by ECJ is clearly a de facto
“likelihood of confusion” test.

15
contrary, economically linked to that proprietor, the conclusion must also be that
there is an adverse effect on that function of the trade mark. [Emphasis added]38
This addition entails that also ads which are vague on the origin of the advertised products
constitute infringing use.
Many would perceive the finding highly self-evident that ads that confuse the user should be
prohibited. Yet the standard did entail one fundamental by-product as regards the scope of
this paper, namely:
The selection of any trademark as an advertisement-triggering keyword is always

permissible per se.
As the existence of an infringement depends on the appearance of the ad, a certain concept
within this Google France consumer confusion standard deserves at this point some extra
attention.
3.1 Preliminary Remarks on “Normally Informed and Reasonably Attentive Internet

Users”
In the above-referred paragraphs 84 and 90, we notice that the ECJ has established an
unprecedented hypothetical group of “normally informed and reasonably attentive internet
users” as the measuring stick on when an ad should be deemed as too misleading or vague to
be deemed impermissible. In contrast to the ECJ’s traditional stance in its trademark rulings,
this group is based upon internet users in general, as opposed to a more limited group of
relevant consumers in the given field of business. 39
Firstly, as a positive remark, the core idea of the Google France consumer confusion standard
can be welcomed from a keyword advertiser’s perspective for being prima facie somewhat
straightforward in the sense that its comprehension does not require extensive expertise on
EU intellectual property law.40 Also the fact that the trademark does not need to be mentioned
38 Similarly Portakabin para 34, BergSpechte para 36.

39 For example in Adam Opel the ECJ had referred to “[…] the average consumer of the
products of the toy industry, normally informed and reasonably attentive and circumspect
[…]” Adam Opel para 23, emphasis added.
40 If we apply the standard to the examples mentioned in the introduction, common sense
would suggest that for example none of the adverts in the “Toyota Yaris” example confuse the
user as regards the origin of the adverts: it is at least the opinion of the author that normally
informed people will probably realize that the used cars site, the car comparison site, the car
magazine and the Suzuki Swift dealer are not affiliated with Toyota. However, none of the
ads mention this fact explicitly: does this amount to vagueness within the meaning of Google
France? Did the ECJ endorse such clarifications?

16
to be deemed confusing—ensuing from the (as it will turn out: otherwise problematic)
flexibility of the standard—should be welcomed for the reasons stated in the introduction. 41
Nevertheless, the abstractness of the Google France consumer confusion standard entails its
considerable problems too. In fact, a certain frontline of doctrines heaves into sight.
As I hinted in the introduction, it could be presumed that certain users expect that every
advertisement triggered by a search for a trademark to represent the googled trademark, at
least unless the ad text contains an explicit dissociation from such a relation. For many
others, in turn, such a presupposition would be absurd.
So where does the “reasonably attentive and normally informed internet user” place in this
set-up? Obviously, this depends on whom you ask. This vast array of opinions is indeed the
source for the emerging problems. The national application of the hypothetical standard has
already proven inconsistent, in stark contrast with the effect that was expected from the
ruling.
In fact, the relevance of the ECJ’s subsequent keyword rulings, examined below, is chiefly in
their input towards clarifying this very concept and the problems it entails.
3.2 BergSpechte: The Google France Consumer Confusion Expands to Article 5(1)(b)
BergSpechte was, frankly, not that significant a ruling from the ECJ.
Understanding its doctrinal implications necessitates a return to the wordings of the

Trademarks Directive.
41 The ECJ’s consumer confusion standard resembles the concept of “initial interest
confusion” applied in the U.S. Whereas “likelihood of confusion” is the standard mentioned
in federal law (Lanham Act, 15 U.S.C. § 1114 (2005)), the concept of “initial interest
confusion” has been developed by the courts. (Grotrian v. Steinway & Sons, 523 F.2d 1331,
1342 (2d Cir. 1975)). It means infringement through use of the trademark by another which
initially confuses the consumer about the origin of the source of the user but where this
misperception is vanished by the time of the purchase. Obviously in keyword advertising
deceptive ads would be prohibited on the basis of it, as the case is in the Google France
confusion standard. However, the American judgments seem to vary in this sense, as some
Circuit Courts have managed to expand the scope of “initial interest confusion” to cases
involving clearly non-confusing use. (See, inter alia, Storus Corp. v. Aroa Marketing, Inc.,
No. C-06-2454 MMC, 2008 WL 449835, at *4 (N.D. Cal. Feb. 15, 2008) The Ninth Circuit
held that "under the 'initial interest confusion' theory of trademark liability, 'source confusion'
need not occur; rather, in the internet context, the wrongful act is the defendant's use of the
plaintiff's mark to 'divert' consumers to a website that 'consumers know' is not Storus'
website.") Accordingly, many have called for the abolition of the concept of initial interest
confusion. See, inter alia Burrell & Gangjee IIC 2010 p.555, Rothman, Jennifer E., “Initial
Interest Confusion: Standing at the Crossroads of Trademark Law” 27 Cardozo L. Rev. 105.

17
As explained, in Google France the Court had held that actionable infringement under Article
5(1)(a) the wording of which involved the use of identical signs required an adverse effect on
the function of indicating origin. In keyword advertising context this gave birth to a de facto
likelihood of confusion investigation.
Article 5(1)(b) of the Trademarks Directive, in turn, involves the use of merely similar signs
and the wording of the directive explicitly requires an occurred “likelihood of confusion” on
the part of the public.
These factors would logically suggest that there is no difference42 between the examinations
on the consumer confusion standard under Articles 5(1)(a) and 5(1)(b) in the keyword
context.
In BergSpechte43 this view was confirmed: the ECJ outlines a direct analogy between the
relevant examinations under Articles 5(1)(a) and 5(1)(b)44.
What does this mean in practice? The analogy entails that it is irrelevant whether the
advertiser uses the trademark as a whole or merely partly, as it is the de facto consumer
confusion that counts.
The facts of the case serve as a practical example. The defendant, owner of “trekking.at
Reisen GmbH” had acquired as keywords that triggered its travel service advertisement
words “Bergspechte” and “Edi Koblmuller”; the expressions were mere parts of the
applicant’s trademark “Bergspechte Outdoor-Reisen und Alpinschule Edi Koblmuller”.
3.2.1 National Court in BergSpechte: The Google France Consumer Confusion Standard
Utilized to Require Explicit Disclaimers
As a partly different but nevertheless significant matter, the ruling of the national court,
delivered in June 2010 on the basis of the Google France consumer confusion standard, can
be perceived as a “sign of things to come” regarding the national application of the threshold.
45
The defendant’s ads had declared merely “Ethiopia by bike” and thus did not expressly
suggest any relationship between these competing operators. Der Oberste Gerichtshof
42 Although in Google France the ECJ, upon reasoning the entry of the advertising function,
did note that the scope of 5(1)(a) is the broader one. Google France para , Advocate General
Maduro on Google France para 100.
43 “Bergspechte”, C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi
Koblmüller GmbH v Günter Guni, trekking.at Reisen GmbH.
44 Portakabin para 53, BergSpechte para 41. See Google France para 89 and 90 .
45 BergSpechte para 12.

18
nevertheless found the defendant liable for trademark infringement on the basis of likelihood
of confusion on the part of the public.46
Slightly jaw-droppingly, the Court justified its decision on, inter alia, the lack of “appropriate
clarifying indications” in the actual ads.
It appears that the Austrian court is evoking a distinctively low standard on what “normally
informed and reasonably attentive internet users” are actually able to ascertain. It is in my
view highly dubious that a general requirement for explicit disclaimers was the Court’s
rationale, a fact further manifested in Portakabin.
3.3 Portakabin: The Google France Consumer Confusion Standard Expands to Articles
6 and 7
While also Portakabin can justifiably be held as a relatively unimportant ruling, also it shed
some additional light on the Google France consumer confusion standard.
When it comes to the actual facts of the case, Primakabin was a Dutch enterprise selling and
leasing new and second-hand mobile buildings, including those manufactured by a company
called Portakabin. Primakabin had purchased “Portakabin” (as well as certain misspellings of
the trademark) as the keyword that would trigger the display of Primakabin’s ads, which
declared, inter alia, “Used Portakabins”. 47 Thus Portakabin did not involve explicitly the use
of trademark by a competitor: the relationship was rather one between the proprietor and a
reseller of corresponding used items.
The ruling was for the most part an anti-climax: basically the ECJ non-surprisingly held that
the investigation under the Google France consumer confusion standard cannot generally be
circumvented via either Article 648 on limitation to the effects of a trademark or Article 749 on
exhaustion of the rights conferred by a trademark.
46 21st of June 2010 in 17 Ob 3/10f BergSpechte.

47 Portakabin para 17.
48 Article 6 Limitation of the effects of a trade mark 1. The trade mark shall not entitle the
proprietor to prohibit a third party from using, in the course of trade, (a) his own name or
address; (b) indications concerning the kind, quality, quantity, intended purpose, value,
geographical origin, the time of production of goods or of rendering of the service, or other
characteristics of goods or services; (c) the trade mark where it is necessary to indicate the
intended purpose of a product or service, in particular as accessories or spare parts; provided
he uses them in accordance with honest practices in industrial or commercial matters.
Portakabin paras 66 to 72. Para 72: “In the light of all of the foregoing considerations, the
answer to the second question is that Article 6 of Directive 89/104 must be interpreted as
meaning that, where use by advertisers of signs identical with, or similar to, trade marks as

19
However, in addition to these findings the ECJ held that merely the fact that the actual
wording of the ad indicates the relevant goods are being resold does not create an adverse
effect on the function of indicating origin by suggesting the advertiser and the proprietor
being economically linked.50 Secondly, a reseller is allowed to use the trademark in
advertising even though it would be selling also other second-hand goods.51
Both52 of these criterions were quite obvious on the basis of the Google France consumer
confusion standard alone, if one had not adopted the aforementioned standard presuming that
for “normally informed and attentive internet users” all or most advertisements triggered by
the googling of a trademark normally represent (or could represent) the trademark in
question, and for that reason explicit disclaimers about the non-relation between the googled
trademark and the advertiser should be the norm.
Portakabin would thus seem to further evidence that the ECJ’s aim in Google France was not
to promote a strict interpretation (akin to the one demonstrated by the Austrian court in
BergSpechte) on what constitutes an adverse effect on the essential function of indicating
origin. Put differently: it probably did not endorse the requirement for explicit disclaimers.
keywords for an internet referencing service is liable to be prohibited pursuant to Article 5 of

that directive, those advertisers cannot, in general, rely on the exception provided for in
Article 6(1) in order to avoid such a prohibition. It is, however, for the national court to
determine, in the light of the particular circumstances of the case, whether or not there was, in
fact, a use, within the terms of Article 6(1), which could be regarded as having been made in
accordance with honest practices in industrial or commercial matters.” [Emphasis added.]
49 Article 7 Exhaustion of the rights conferred by a trade mark 1. The trade mark shall not
entitle the proprietor to prohibit its use in relation to goods which have been put on the
market in the Community under that trade mark by the proprietor or with his consent. 2.
Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose
further commercialization of the goods, especially where the condition of the goods is
changed or impaired after they have been put on the market.
Portakabin para 81: “[…]circumstances in which use of that sign by the advertiser does not
enable normally informed and reasonably attentive internet users, or enables them only with
difficulty, to ascertain whether the goods or services referred to by the ad originate from the
proprietor of that mark or from an undertaking economically linked to it or, on the contrary,
originate from a third party – correspond to a situation in which Article 7(2) of that directive
applies and in which, accordingly, the advertiser cannot rely on the exhaustion rule laid down
in Article 7(1) of Directive 89/104.” [Emphasis added.]
50 The Court thus allowed per se the use of the trademark in the actual ads for sellers of
corresponding used items, without requiring explicit disclaimers. Portakabin para 84.
51 Portakabin para 86. This almost self-evident criterion can most certainly be applied to the
selling of new goods and services as well.
52 As an additional factor, in some occasions the original Portakabin labels in the actual
physical products had been replaced with new labels. The Court expressly prohibited the
combination of “debranding” and this type of keywords advertising (Portakabin para 85).

20
3.4 Advocate General on L’Oréal v. eBay: The Google France Consumer Confusion
Standard Revisited
The Google France consumer confusion standard was further revisited on 9 December 2010,
when Advocate General Niilo Jääskinen delivered his opinion in L’Oréal v. eBay.53 The
questions referred to the ECJ concerned inter alia54 eBay’s keyword advertising policy: the
auction site had purchased certain trademarks for its keywords. Clicking on these ads directed
the user to a page where also counterfeits proclaiming the mark in question have been for
sale.55 Example of one such ad:
“Shu Uemura
Great deals on Shu uemura
Shop on eBay and Save!
www.ebay.co.uk”
Basically the preliminary question with relevance for the scope of this paper enquired
whether ads such as the one above cause an adverse effect on the function of indicating origin
by misrepresenting eBay’s role56 as an auction site by suggesting a closer commercial link
between the trademark proprietors and eBay.
Evaluation of this question necessitated that the Advocate General “stepped” on the consumer
confusion frontline described above.
Mr. Jääskinen proceeded to argue that it “is his opinion” that users above the hypothetical
threshold are generally able to distinguish between “an electronic marketplace, a direct seller
of goods or services and the commercial source from which the goods or services
53 Advocate General Jääskinen on L’Oréal v. eBay. The opinion was the first one by
Jääskinen related to keyword advertising
54 The original British dispute concerned various other questions, predominantly the liability
of eBay for sellers listing and selling counterfeited items on the auction site.
55 eBay was thus not advertising an alternative product instead of original Shu Uemura
products but rather (at least in its own opinion) the original Shu Uemura products via “an
alternative route” (Advocate General Jääskinen on L’Oréal v. eBay para 102). Hence, the case
did not constitute “directly competitive” use per se. However, as the Google France
consumer confusion standard should be applied to all uses of another’s trademark, these
stipulations in Portakabin and L’Oréal v. eBay on that same standard are relevant concerning
also the use of competitor’s trademark.
56 eBay does not explicitly underline in the ad its role as an online auction site and the fact
that such a business model presumably entails for the consumers a higher risk of
encountering counterfeits for sale. The applicants found this constituting actionable
trademark use.

21
originate.”57 In other words, the opinion was in my view a further vote against the
requirement for general requirement for explicit disclaimers.
3.5 Some Concluding Remarks on the Google France Consumer Confusion Standard
3.5.1 Advertisers and Legal Certainty
When it comes to the question on consumer confusion in keyword advertising, an arguably

logical threshold has been set by the ECJ in Google France. In a system where the ECJ’s
stance should harmonize the national interpretations, the abstractness of the standard has
turned out fatal: different people seem to have structurally different perceptions as regards
what actually constitutes de facto consumer confusion in keyword advertising. 58
As for the keyword advertising practitioners, even if they are aware of the Google France
consumer confusion standard, they still would not know when such use is allowed in a given
advertisement: while they—as presumably “normally informed and reasonably attentive
internet users” themselves—probably have zero problems making up their mind whether their
ad confuses the user (or is vague towards the same end), that is not the point. The real
problem is that advertisers cannot know whether the eventual judge in case of a legal dispute
will apply the same standard as they themselves do.
In my view, the EU-wide legal harmonization of an advertising concept of this magnitude

should not depend on the web savviness of those individuals who happen to be the judges
responsible for deciding keyword advertising cases in the national courts.
3.5.2 Uncertainty about the “Normally Informed and Reasonably Attentive Internet
Users”: Countermeasures
As the problem of the Google France standard on the function of indicating origin was
precisely its abstractness, the situation should be fought with characteristically concrete
57 Advocate General Jääskinen on L’Oréal v. eBay para 108. He continues: “And this
because the existence of various intermediary economic activities such as distributors,
brokers, auction houses, flea markets and real estate agents is known to every adult living in a
market economy. Hence, a mistake concerning the origin of goods or services cannot be
presumed only because a link leads to the ad of an electronic marketplace operator if the ad
itself is not misleading as to the nature of the operator.”
58 The lack of legal certainty is evidenced inter alia in the fact that despite the ECJ’s general
seal of approval for the practice, casual googling evidences that such use of competitor’s
trademark seems to be surprisingly rare. It seems that advertisers have to a considerable
extent been able to be “frightened away” from the practice, regardless of whether their ad
would or would not confuse the user as regards the origin of the products.

22
weapons. The ECJ should list additional, universally applicable conditions to limit the
currently abstract scope of the consumer confusion standard.
In L’Oréal v. eBay the Advocate General implied that it his opinion that “normally informed
and reasonably attentive internet users” are generally able to ascertain the difference between
a certain group of different business operators.This is the direction where also the ECJ should
now increasingly go: towards specifying the perception level of this crucial albeit elusive
group.
Especially, in my view, it should explicitly be “put on paper” that googlers are generally able
to ascertain that ads which do not actively evoke affiliations towards the trademark are not
economically linked to it. This way the ECJ could de facto denounce the requirement for
explicit disclaimers like “A SUZUKI IS NOT A TOYOTA!” in the ads.59
A big contributing factor why such expressions are currently not used in keyword ads derives
from the fact that the space for texts in contemporary keyword advertising is very limited. 60
This fact has in my view been neglected so far by the ECJ and the Advocate General. Were
such a flexible factor incorporated to the consumer confusion standard, it could then be
applied without problems to all keyword advertising cases irrespective of the technical
limitations of each one. That would also be a vital reminder for national courts to keep in
mind what, in fact, is realistically possible for real-life keyword advertisers. 61
The appropriate occasion for the suggested operations would be the ECJ’s upcoming
Interflora ruling, to which I return at the very end of this paper. However, the Advocate
General’s opinion in that case illustrates that Mr. Jääskinen is suggesting a differing
approach.
59 Critics of these exaggerated illustrations could argue that disclaimers should be deemed
necessary in cases of lesser-known trademarks. In my view the disclaimers would in these
cases as well often be similarly redundant. After all, does not the fact that the user is informed
enough to know to google the unknown trademark in question evidence that the user has to be
at least relatively informed about the basic logics in the sphere of commerce in question?
60 As Maximilian Schubert remarked on the subject after BergSpechte: ”How many of the 95
characters of a text ad should be devoted to ruling out any possible misunderstandings?
Shouldn’t it be enough to demand that the advertisers don’t do anything to actively provoke
confusion?” Austrotrabant's Blog: “Where To Draw The Line? The Main Question Left After
Google France” 4.11.2010, http://austrotrabant.wordpress.com/2010/11/04/the-crucial-
question-the-ecj-in-google-france-left-the-national-courts-to-decide/#more-3228 , visited
11.4.2011. Austrotrabant’s blog is an excellent resource as regards the legal implications of
keyword advertising. Top blogs like Austrotrabant’s signify the future of legal research.
61 One thing is sure, though: the vaster the requirement for disclaimers, the more the use of
competitor’s trademarks will be discouraged.

23
3.6 Advocate General Jääskinen on Interflora: The Google France Consumer Confusion
Standard and “Commercial Networks”
Advocate General Jääskinen delivered his opinion on Interflora on 24 March 2011. Similarly
with L’Oréal v. eBay, the ECJ’s ruling has not been delivered as of the publication of this
paper.
Screenshot captured on 9.4.201162. Anyone can evaluate whether this M&S’s ad should be
perceived as vague enough to suggest a possible economic link between M&S and Interflora
in the eyes of “normally informed and reasonably attentive internet users”.
Interflora is a classic variation of the use of competitor’s trademark in keyword advertising.
Retailer Marks & Spencer had purchased “Interflora”, the name of the global mighty operator
in the field of florist services, as the keyword triggering its ads for similar services. Akin to
the facts of BergSpechte, the wording of the M&S’s ad does not suggest any economic
linkage between M&S and Interflora, although it does not explicitly deny those either.63
Hence, it can be said that at least a certain element of vagueness—which the ECJ has deemed
as adversely affecting the function of indicating origin and thereby triggering infringement—
is indeed present in M&S’s ads.
Indeed, a certain percentage of the googling public probably erroneously perceives that
Marks & Spencer might be a member of the famous, global Interflora network upon being
faced with M&S’s ad after having googled “interflora”. The question was, then, whether this
was enough to constitute an act of actionable trademark use.
The Advocate General agreed with the applicants. Indeed, the key to that finding is precisely
the “commercial network” niche of the case. Jääskinen argued:
62 Thus, obviously, during and not prior the ongoing proceedings.

63 Advocate General Jääskinen on Interflora para 28.

24
“To my mind the display of the ad as a consequence of typing ‘interflora’ into a

search engine creates in the context of this case an association that Marks & Spencer
is part of the Interflora network.”64 [Emphasis added.]
Consequently, Jääskinen’s actual proposition for the preliminary ruling ended up being:
“An error concerning the origin of goods or services arises when the competitor’s
sponsored link is liable to lead some members of the public to believe that the
competitor is a member of the trade mark proprietor’s commercial network when it is
not.[...]”65 [Emphasis added.]
3.6.1 Interflora: Challenges Ahead for the ECJ on the Google France Consumer
Confusion Standard
This illustrated “cultivation” of the Google France consumer confusion standard by the
Advocate General basically leaves us with three questions.66
1. What constitutes “some users”?
2. a) What constitutes a “commercial network”?
b) Which situations should be perceived as sufficiently reminiscent of the

“commercial network” category to trigger a similar de facto requirement for explicit
disclaimers in the ads?
Firstly, as quoted, Jääskinen concluded that if the ad is liable to fool “some” users in this
regard, it triggers an adverse function on the function of indicating origin. I find the
expression “some users” far too vague, further increasing the lack of legal certainty problem.
Is one confused user enough to constitute “some users”? What about two? At least in my
view the expression “some users” surely suggests a smaller and thus less savvy group than
the “classic” keyword advertising standard of “normally informed and reasonably attentive
internet users”.
Obviously, the expression “some users” stems from the formulation of the national court’s
preliminary question.67 However, the ECJ and the Advocate General do not have to stick with

66 This derives from the Advocate General’s choice not to rephrase the wording from the
awkward question by the national court.
67 ”[…](4) Does it make any difference to the answer to question 3 above if: (a) the
presentation of the competitor’s sponsored link in response to a search by a user by means of
the sign in question is liable to lead some members of the public to believe that the
competitor is a member of the trade mark proprietor’s commercial network contrary to the
fact […], Advocate General Jääskinen on Interflora para 30.

25
the national court’s wordings in the preliminary reference procedure. The particular question
in Interflora remains in my view a sure-fire case for such an operation to be conducted by the
ECJ.68 This is not the main problem, however.
More importantly, the Advocate General is de facto evoking granting a privilege to

“commercial networks of independent enterprises providing a special uniform service” 69 in
relation to all other operators. This argumentation is based on something called the
“secondary meaning” of the trademark.70 If the ECJ goes along with Jääskinen, such
“commercial networks” could prevent the keyword uses of their trademarks, unless the ad
text contains an explicit disclaimer (as in “Marks & Spencer Flowers: We Are Not Part Of the
Interflora Network!”).
I find this finding of his deplorable for the sake of legal certainty. If the ECJ would agree
with the Advocate General, it would become very difficult to define which entities fulfill this
coveted “commercial network” threshold. Secondly, it would be unfair for the companies
competing with these “commercial networks”. Such entities could not prevent the
commercial networks using their trademarks as keywords while the commercial networks
could prevent the practically identical act inter partes by these “non-networks”.
Also, the interconnected question arises which situations should be perceived sufficiently
reminiscent of the commercial network category, in order to widen the privilege in question
to those cases.71
68 Otherwise the national court’s phrasing would cause an inadvertent de facto tightening of
the Google France consumer confusion standard.
69 Advocate General Jääskinen on Interflora para 46
70 Advocate General Jääskinen on Interflora para 47: “Therefore, in my understanding, in
addition to its registered meaning, the trade mark INTERFLORA has gained a ‘secondary
meaning’ (36) denoting a certain commercial network of florists providing a certain type of
delivery service, and the reputation of that trade mark relates to or is identical with the
positive associations this meaning has in the minds of the relevant circles of consumers. (37)”
71 In my opinion, for example, if a user types “Nike” in Google, and detects a resulting ad
from a shoe store selling only Adidas shoes, the user would be even more likely to think that
that store would be selling Nike shoes than a user typing “interflora”, and seeing M&S’s ad
would be expecting on the basis of the ad that M&S is part of Interflora’s commercial
network. It can be added that such stores were in the “grey area” already prior to the
Interflora opinion (for example in Portakabin the applicant had genuine Portakabins for sale
and not merely competing products). In these cases there are arguably good reasons to require
disclaimers. However, in my view legal certainty would be best promoted if the disclaimers
were not required in even these cases. These remarks are anyway mere speculations: the only
real answers can unfortunately arrive merely by means of new preliminary references by
national courts.

26
“Commercial networks” should not in my view be given any privileges as that would open
the floodgates for extensive requirements for explicit disclaimers. 72 The problems with legal
certainty in keyword advertising are vast enough as things stand. As regards the actual
Interflora case I would endorse deeming M&S’s ads permissible.
I present a further proposition for the promotion of legal certainty at the very end of this
paper.
3.7 The ECJ’s Preliminary Reference Procedure and the Google France Consumer
Confusion Standard
The ECJ’s approach to the division of competences between itself and the national courts has
turned out to be an especially peculiar subplot in its keyword advertising case saga thus far.
The discretion between the national courts and the ECJ in the preliminary reference
procedure is prima facie simple. The ECJ interprets EU law where the correct interpretation
is not clear. The national court then applies this ruling to the facts of the particular case. 73 The
more detailed the question from the national court, the more the interpretation of the ECJ
tends to resemble de facto application. 74 The division between interpretation and application
is in practice often a very fine line, and the phenomenon has traditionally been emphasized in
trademark law.75 For example, the ECJ has normally left the consumer confusion
investigation—which, as we have seen, is a crucial part of the keyword advertising cases—to
national courts.
72 The ECJ can still shut the “Pandora’s Box” the Advocate General is attempting to open by
discouraging the requirement for disclaimers in the manner I previously suggested.
73 Craig and De Burca argue that this distinction is the differentiating factor in contrast to
traditional appellate system where the superior courts are equipped with the discretion to
decide the actual case Craig, Paul & De Burca, Gráinne “EU Law”, Oxford University Press,
2008, p.493.
74 A seminal case in this regard was Van Gend en Loos of 1962. The ECJ’s approach of
choice was practical enough to deem it necessary to actually examine the correct tariff
classification for a fabric called urea formaldehyde. 26/62 NV Algemene Transport- en
Expeditie Onderneming van Gend & Loos v Netherlands Inland Revenue Administration
[1963] ECR I. Also, as Craig and De Burca note “the ECJ will be particularly motivated to
provide ‘the answer’ where it wishes to maintain maximum control over the development of
an area of the law”. Craig and De Burca p. 494.
75 See Dinwoodie, Graeme B. & Janis, Mark D. “Trademark law and theory: a handbook of
contemporary research” p.202. This has entailed that the ECJ generally does not conduct the
investigation whether the operation in question constitutes consumer confusion. However, in
Arsenal it manifestly disagreed with the national court’s interpretation (Arsenal, Dinwoodie
& Janis p.202).

27
In Google France the ECJ did just that. It left it as a question of fact for the national courts to
decide on a case-by-case basis whether an adverse effect for the function of indicating origin
has been caused by the defendants’ ads.76 The pattern recurred in BergSpechte, Portakabin
and Eis.de as well as in the Advocate General’s opinion in L’Oréal v. eBay.77
However, as we just observed, the approach was different in the Interflora opinion. The
Advocate General proceeded to explicitly examine whether the actual M&S’s ad caused an
adverse effect on the trademark’s function of indicating origin. At least the author is baffled
how the Advocate General could have got himself any more entangled in the particular facts
of the case.78 If the ECJ follows Jääskinen’s footsteps, no room for discretion will be left for
the national court.
However, such an approach should not necessarily be perceived as a sign of any ongoing
revolutions within the ECJ. Rather this “shift” derives simply from the formulation of the
particular preliminary request by the national court. Yet the question emerges: why the British
court practically “returned” the investigation to the ECJ? In my view the fact that national
courts are demanding such clarifications is a further compelling sign about the insufficiency
of the Google France consumer confusion standard.
4. Google’s Policy Conclusions post-Google France
While Google’s liability79 is not within the scope of this paper, its policy choices regarding
the advertising techniques it allows and endorses naturally strongly affect the practical use of
competitor’s trademarks in keyword advertising.
76 Google France para 88. Similarly BergSpechte para 37, Portakabin para 36.
77 Although the Advocate General did provide “his opinion” about whether eBay’s role
should have been more explicitly signaled in the ads in question.
78 Nevertheless, the Advocate General does leave the question of whether Interflora has a so-
called secondary meaning as a “commercial network” to the national court. Advocate General
Jääskinen on Interflora, footnote 37.
79 It should be added that while Google was found not to be infringing trademarks with its
AdWords system, the Trademarks Directive, “does not exclude the application to trademarks
of provisions of law of the Member States other than trade mark law, such as the provisions
relating to unfair competition, civil liability or consumer protection”. (Trademarks Directive,
preamble 6. Emphasis added.) Thus, the evaluation of Google’s liability from the perspective
of unfair competition law is another story. Regarding these alternative forms of liability, in
Google France the ECJ examined whether Google should be exempted from liability under
Article 14 on “Hosting” of the E-Commerce Directive 2000/31/EC (Directive 2000/31/EC of
the European Parliament and of the Council of 8 June 2000 on certain legal aspects of
information society services, in particular electronic commerce, in the Internal Market, OJ L
178/2000 P. 0001 – 0016). The exemption is applied to internet intermediary services

28
Google has recently made certain policy amendments80 reflecting the ECJ’s 2010 AdWords
case law.81 Yahoo and Microsoft have since followed suit.82 Before 14 September 2010,
trademark proprietors had been able to restrict the use of their trademarks as keywords in
AdWords by means of requesting a “trademark investigation” from Google. Ever since that
day, Google no longer prevents advertisers from selecting a third party's trademark as a
keyword in the EU and EFTA regions: Google specifically mentions “ads for competing
provided their role is of “a mere technical, automatic and passive nature” implying the
service provider not having “neither knowledge of nor control over the information which is
transmitted or stored”. (Directive 2000/31/EC, recital 42. Google France, para 113.) See also
Clark, Birgit: “ECJ Decides in French Google AdWord referrals: more seek than find?”,
Journal of Intellectual Property Law & Practice (2010) 5 (7): 477-480, p.479-480. Whereas
Maduro considered that the “safe harbor” does not apply to AdWords, the ECJ’s conclusion
was to leave the final assessment to the referring national court whether Google’s role as an
“advertising host” was inactive enough. However, the Court pointed out that the fact Google
is remunerated does not automatically deprive it from the exemption. Subsequently, the Cour
de cassation found Google to be exempted from liability altogether under Article 14 of the
Directive 2000/31/EC (Advocate General Maduro had examined thoroughly some scenarios
where Google’s liability could actualize, hinting to Google’s popular Keyword Suggestion
Tool. “It is in the context of possible liability that particular aspects of Google’s role – such
as the procedure under which it allows advertisers to select keywords under AdWords – could
be taken into account. For example, Google provides advertisers with optional information
which can help them to maximise the exposure of their ads. As some of the parties have
pointed out, it may be that information on keywords which correspond to trade marks will
also yield (as related keywords) information on expressions denoting counterfeit. (64) On the
basis of that information, advertisers may decide to select those expressions as keywords in
order to attract internet users. It is possible that, in so acting, Google may be contributing to
internet users being directed to counterfeit sites.” (Advocate General Maduro on Google
France para 123-125. The quote from para 124.) [Emphasis added] The ECJ, though,
following Maduro’s footsteps on the Keyword Suggestion Tool, also held that in the scrutiny
“the role played by Google in the drafting of the commercial message which accompanies the
advertising link or in the establishment or selection of keywords is relevant.” (Google
France, para 118). The Keyword Suggestion Tool was central also in the American
Rescuecom case where United States Court of Appeals for the Second Circuit held that
recommending trademarks as keywords was commercial use of trademark. Rescuecom Corp.
v. Google Inc., 562 F. 3d 123 - Court of Appeals, 2nd Circuit 2009.
80 Generally, Google’s policy shifts demonstrate a tendency consisting of general laissez-
faire attitude, at-times conveniently vague communication, selective explicit rules as well as
a relative willingness to investigate policy violations. The choices enshrine Google’s
comprehension about the relevant legal state of affairs throughout the EU. Its final purpose
self-evidently is the maximization of profit - and doing it lawfully.
81 Google does not attempt to hide the obvious fact that the policy shift is a direct reaction to
Google France (Google Adwords Help: “Updates to AdWords trademark policy”).
82 See Bing’s UK “Intellectual Property Guidelines”
http://advertising.microsoft.com/uk/support-centre/search-advertising/intellectual-property-
guidelines ; Bing’s similar guidelines in France “Propriété Intellectuelle”
http://advertising.microsoft.com/france/publicitaires/propriete-intellectuelle , both sites
visited 22 February 2011.

29
products or services” as a permissible type of advertisement under its policy, just as long as
the ad is not confusing.83
However Google remains willing to conduct a “limited investigation” as to whether a

keyword in combination with a particular ad text is confusing as to the origin of the
advertised goods and services.84 Yet this scrutiny on the confusion level of a given ad will
naturally be based on merely Google’s own perception: it probably does not contain, for
instance, the requirement for “appropriate clarifying indications”. 85
5. Infringing Use of Competitor’s Trademark Not Liable to Confuse the User in

Keyword Advertising
The remarks made in this chapter relate to the second (and more controversial) type of
possibly infringing use of competitor’s trademark, namely the use not liable to confuse the
user. This question of dilutive keyword use necessitates an initial return to Google France. In
that ruling we already noticed the ECJ’s recognition of the existence of two relevant
trademark functions, the impairment of which would trigger actionable trademark use.
Now, following the scrutiny of the function of indicating origin, it is appropriate to turn to the
other function mentioned in that context, namely the advertising function.
5.1 Google France: the ”Irrelevant” Advertising Function Emerges (Almost) Out of
Nowhere
In 2009’s L’Oréal and Others the ECJ had ruled that actionable use of the trademark under
Article 5(1)(a) could also take place when other function than the function of indicating
origin is being jeopardized. The ECJ proceeded to identify by name “the functions of
83 “AdWords policy on trademarks in ads - scope of investigation”

http://adwords.google.com/support/aw/bin/answer.py?hl=en&answer=144298, visited
4.1.2010. “Under our EU and EFTA policy, we will permit the following types of ads to
display against a trademarked keyword, provided that the ad is not confusing as described
above. (The following are examples and not an exhaustive list.) ads using a trademarked term
when that term is being used in a descriptive or generic way, such as not in reference to the
term as a trademark; ads for competing products or services; ads for resale of the trademarked
goods or services; ads for the sale of components, replacement parts, or compatible products
corresponding to a trademark; ads for informational sites about a product or service
corresponding to the trademark”.
84 Google Adwords Help: “Updates to AdWords trademark policy”
https://adwords.google.com/support/aw/bin/answer.py?hl=en&answer=177578, visited
14.11.2010.
85 Additionally, it is probably unnecessary to mention that Google does not investigate
whether an ad constitutes unlawful “free-riding”.

30
communication, investment or advertising”86 as the relevant alternative functions in relation

to the said article.87 As the function of indicating origin encompassed the test on the
consumer confusion element, this recognition of the possibility of an adverse effect caused to
these alternative functions would logically entail that in some occasions Article 5(1)(a) can be
breached without any confusion having occurred to the user.
The advertising function per se (without accompanying descriptions such as communication

or investment) made its “solo debut” in Google France to the Court’s case law. 88 The choice
was not justified at all and it resembles to me an arbitrary attempt to follow on the footsteps
of L’Oréal and Others89 in which the ECJ held that an adverse effect on this function is
caused when “use adversely affects the proprietor’s use of its mark as a factor in sales
promotion or as an instrument of commercial strategy.”90
Actually, the concept of the advertising function has been understood in trademark law
literature as the interest the concept of dilution protects per se.91 However, it would in my
view be a mistake to understand this idealistic function to signify the one applied in Google
France—in other words to overestimate the latter’s significance—merely because of the
latter’s title. 92
86 L’Oréal and Others para 63: “It is for the referring court to determine whether, in a
situation such as that which arises in the main proceedings, the use which is made of the
marks belonging to L’Oréal is liable to affect one of the functions of those marks, such as, in
particular, their functions of communication, investment or advertising.” [Emphasis added.]
87 In case law prior to L’Oréal and Others, these other functions had been left unspecified.
The existence of these functions had been recognized in C-245/02 Anheuser-Busch Inc. v
Bud jovický Budvar, národní podnik and Adam Opel.
88 Advocate General Maduro had elaborated in his Google France opinion on “the other
functions of the trade mark, namely guaranteeing the quality of the goods or services or those
of communication, investment or advertising”. Yet Maduro did not sort out the advertising
function per se (Advocate General Maduro on Google France para 113).
89 As Jacob LJ, the British judge in charge of the actual national proceedings, commented in
his judgment where he applied the ECJ’s L’Oréal and Others ruling “I am bound to say that I
have real difficulty with these functions when divorced from the origin function. There is
nothing in the legislation about them. Conceptually they are vague and ill-defined.” L'Oreal
SA v. Bellure NV, [2010] EWCA Civ 535 (CA (Civ Div) 2010).
90 Google France para 92. Such wording directs the attention to the detriment caused by the
proprietor, as opposed to the benefit gained by the advertiser.
91 […]the EU legislature has recognised the importance of the advertising function by
prohibiting dilution-type infringement under Art. 5(2) of the Directive[…]”, Simon, Ilanah:
”How Does “Essential Function” Doctrine Drive European Trade Mark Law?”, IIC 2005,
36(4), 401-420, p.419.
92 See Pihlajarinne, Taina: “Toisen tavaramerkin sallittu käyttö”, WS Bookwell Oy 2010,
p.45

31
5.1.1 The Curious Application of the Advertising Function
The ECJ’s actual application on the adverse effect on the advertising function was based on
the negative advertising implications the use by the advertiser entails for the trademark
proprietor exclusively in Google’s AdWords advertising environment:
“[…]the proprietor of the mark must, as necessary, agree to pay a higher price per
click than certain other economic operators if it wishes to ensure that its ad appears
before those of those operators which have also selected its mark as a keyword.
Furthermore, even if the proprietor of the mark is prepared to pay a higher price per
click than that offered by third parties which have also selected that trade mark, the
proprietor cannot be certain that its ad will appear before those of those third
parties[…]”93 [Emphasis added.]
This wording94 seems to strongly suggest that some kind of an adverse effect for the use of
the trademark as a “sales factor” is indeed caused by the use of the trademark by another
company. 95
In the end the ECJ anyhow concluded that the adverse effect on the advertising function does
not arise upon using competitor’s trademark as a keyword in keyword advertising. 96 The
Court bases its final conclusion on the trademark proprietor’s (presumed) high visibility97 in
Google’s natural results:
“[…] 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. That display, which
is, moreover, free of charge, means that the visibility to internet users of the goods or
services of the proprietor of the trade mark is guaranteed, irrespective of whether or
not that proprietor is successful in also securing the display, in one of the highest
positions, of an ad under the heading ‘sponsored links’.”98 [Emphasis added]
In plain English, with reference to the example in the introduction: the fact that Toyota has to
pay more for its own ad appearing in AdWords due to the keyword use of its trademark by
Suzuki is “OK” because Toyota’s site will keep on ranking high on the normal, natural
Google results triggered by the keyword in question.
93 Google France para 94.

94 The wording, one can add, is a correct analysis about the functioning of AdWords per se.
95 This would have granted de facto guarantees for trademark proprietors to gain visibility
for their ads when their trademark is being googled. It is the opinion of the author that such
stance would have outlawed the selection of competitor’s trademarks as keywords.
96 Portakabin paras 32 and 33, Google France paras 94 to 97.
97 The ECJ’s logic is reminiscent of American case law on so-called cybersquatting of
domain names in the early days of internet. Golinveaux, Jennifer: “What’s in a Domain
Name: Is Cybersquatting Trademark Dilution”, 33 U.S.F. L. Rev. 641 (1998-1999), p.657.

32
This logic99 certainly leaves room for criticism. While usually the site of the trademark
proprietor ranks high on the natural results, there has to be countless exceptions too: Google’s
PageRank algorithm100 for ranking the natural results is not perfect, entailing that for many
trademarks the visibility is not actually guaranteed. Furthermore: is this finding also
applicable to the search engines with weaker ranking formulas?101 Indeed, the ECJ’s keyword
advertising rulings are self-evidently formulated in a way applicable not solely to Google but
to other search engines as well.
All in all, the question arises whether it just might have been more fitting not to introduce the
concept of advertising function (along with the awkward corresponding investigation) at all
but merely settle to proclaim the function of indicating origin as the sole meaningful one. 102
The end result would have been the same either way.
Indeed, the scrapping of the advertising function eventually triggers the conclusion that
advertisers are not required 103 to pay any attention on whether their keyword choices can
impair that function.104 This entails that it is de facto impossible to infringe competitor’s non-
99 The underlying reason for this argumentation just might be a partial attempt to combine
the choice on the additional functions made in L’Oréal and Others ontso certain sections of
Advocate General Maduro’s opinion: the relationship between Google’s natural results and
sponsored links was a constant theme in his opinion. (Regarding the argumentation
techniques of Advocate Generals in the ECJ, see Craig & De Burca, p.70) In fact, however,
Advocate General Maduro’s opinion in Google France actually—while not completely
contradicting it—partly underlines the clumsiness of the Court’s ruling on this part.
According to Maduro “[internet users] may expect that some of those natural results will
correspond to the site of the trade mark proprietor (or an economically linked undertaking),
but they will certainly not believe this of all natural results.” (Advocate General Maduro on
Google France para 86) So while the Advocate General reasons that Google’s lack of liability
partly stems from the fact that natural results are often in an irrational order, the Court’s sole
justification for its advertising function adventure is based on an opposite hypothesis.
100 PageRank is Google's system of ranking pages in their natural search results. PageRank
is currently under review by the European Commission as regards the suspected abuse of
Google’s dominant position in the European search engine market. Regarding the situation of
the investigation at the start of 2011, see: Le Figaro: “Google soupçonné de manipuler ses
services”, 4.1.2011 http://www.lefigaro.fr/societes/2011/01/04/04015-
20110104ARTFIG00692-google-soupconne-de-manipuler-ses-services.php, visited 8.4.2011
101 Perhaps a more proper title for the Court’s definition would have been the function of
access to advertising or visibility function.
102 That way the ECJ would not have been obliged to come up with arguments as to why the
increased pay-per-click costs for the proprietor do not matter.
103 Advocate General Jääskinen seems to have explicitly confirmed this interpretation in
L’Oréal v. eBay by stating that he “thinks” that “such an effect [on advertising function] is
excluded” in keyword advertising (Advocate General Jääskinen on L’Oréal v. eBay para 112).
104 Ott and Schubert have criticized the awkwardness of the ECJ’s advertising function logic
in Google France. They are implying that the ECJ’s stance can be applied only to cases

33
reputable trademark by using that mark in keyword advertising if the use does not constitute
an adverse effect on the function of indicating origin, in other words confuse the consumer
within the meaning of the corresponding Google France standard.
Effectively the stance permits all variations of non-confusing use within the scope of Article
5(1)(a). Indeed, even expressions such as “X imitations” or “Just like X!” are allowed 105—
just as long as the competitor’s trademark used is not reputable under Article 5(2) in the
given Member State.106 The importance of this distinction is clarified in the following chapter
on Article 5(2) of the Trademarks Directive.
5.2 Article 5(2) and the Question of Dilutive Use of Reputable Trademarks
Within the spheres of Article 5(2) of the Trademarks Directive the protection for trademarks
is at its paramount level under EU trademark law.107 In Google France, the ECJ examined
also the application of this article to the use of another’s trademark in keyword advertising.
Before entering into that examination, some remarks on the scope of the particular Article are
necessary.
5(2). Any Member State may108 also provide that the proprietor shall be entitled to
prevent all third parties not having his consent from using in the course of trade any
sign which is identical with, or similar to109, the trade mark in relation to goods or
where the trademark proprietor’s own site was high on the results. “In the future, an
impairment/adverse effect of the advertising function will only be able to be ruled out if the
visibility of the website of the trade mark owner in the search results is sufficiently provided,
as was the case in the examined cases.” However, in my view the Court’s wording clearly
seems to represent “all” keyword advertising cases, as the use of the word “usually” in
paragraph 97 evidences. Ott, Stephen & Schubert, Maximilian “’It’s the Ad text, stupid’:
cryptic answers won’t establish legal certainty for online advertisers” Journal of Intellectual
Property Law & Practice Advance Access published November 8, 2010, p.7.
105 I find this surprising in light of L’Oréal and Others where the ECJ demonstrated a
negative attitude towards such advertisements.
106 While such expressions are specifically not protected under the defense regarding
comparative advertising under the Misleading Advertising Directive (Article 3(1)(h) of the
Directive 84/450/EEC concerning misleading advertising, as amended by Directive
97/55/EC), those provisions are applied only to cases which would otherwise constitute
trademark infringement. See preamble 15 of the Directive 97/55/EC.
107 Advocate General Maduro on Google France para 98.
108 As Mr. Jääskinen notes “[…] it creates an option for further protection of certain trade
marks, which the Member States may choose to implement or not; the United Kingdom has
implemented it, as well as numerous other Member States, if not all […]” Advocate General
Jääskinen on Interflora para 23.
109 The ECJ has also acknowledged that Article 5(2) should be interpreted as covering also
the use of a similar sign, in addition to merely an identical one. Google France para 48, C-
292/00 Davidoff & Cie SA, Zino Davidoff SA v. Gofkid Ltd [2003] ECR I-389 paras 24-30,

34
services which are not similar110 to those for which the trade mark is registered, where
the latter has a reputation in the Member State and where use of that sign without due
cause takes unfair advantage of, or is detrimental to, the distinctive character or the
repute of the trade mark. [Emphasis and footnotes added]
Crucially, the application of Article 5(2) requires that the used trademark is reputable in the
Member State in question: Member States are equipped with plenty of discretion on defining
what actually constitutes such a reputation. Thus the criterion does not necessarily require
that the trademark has to be reputable among the general public of the Member State;
reputation among a specific target group can be sufficient.111
The protection under Article 5(2) encompasses the protection against dilution, signifying
forms of trademark infringement not dependent on the consumers being confused by the
defendant’s conduct. These forms have widely been apprehended to contain blurring and
tarnishment.112
Blurring denotes to “detrimental to the distinctive character of the trade mark” in the wording
of Article 5(2). In practice:
“[…] such detriment is caused when that mark’s ability to identify the goods or
services for which it is registered and used as coming from the proprietor of that mark
is weakened, since use of the later mark leads to dispersion of the identity and hold
upon the public mind of the earlier mark. That is notably the case when the earlier
mark, which used to arouse immediate association with the goods and services for
which it is registered, is no longer capable of doing so.[…]” 113
A classical example is the Kodak one. Were the name “Kodak” allowed to be used by third
parties in other products than photographing equipment, the Kodak trademark would
experience dilution by blurring.114
C-102/07 Adidas AG and Adidas Benelux BV v Marca Mode, C&A Nederland, H&M
Hennes & Mauritz Netherlands BV and Vendex KBB Nederland BV para 37, Advocate
General Jääskinen on Interflora para 57.
110 The ECJ’s case law has affirmed that the rule, contrary to its wording, concerns also
situations including identical or similar products. See, inter alia, Google France para 48, Case
C-17/06 Céline SARL v Céline SA [2007] ECR I-7041 para 16, order in Case C-62/08 UDV
North America [2009] ECR I-0000 para 42, L’Oréal and Others para 58.
111 Inter alia, C-375/97 General Motors Corporation v Yplon SA para 24 to 26, ECR I-
05421. It can be added that the national discretion as regards reputable trademarks of course
hinders the future prospects of a completely harmonized trademark policy regarding keyword
advertising within the European Union.
112 They are currently also explicitly covered under US federal law. Lanham Act § 43 (15
U.S.C. § 1125).
113 This ECJ’s previous comprehension of blurring was provided in C-252/07 Intel
Corporation Inc. v CPM United Kingdom Ltd, ECR I-08823 para 29.
114 The same example is also used by the Advocate General Jääskinen in Interflora para 51.

35
Tarnishment, in turn, denotes “detrimental to the repute of the mark” in the wording of
Article 5(2). Tarnishment “may arise in particular from the fact that the goods and services
offered by a third party possess a characteristic […] liable to have a negative impact on the
image of the mark.”115 Advocate General Sharpston has provided a practical example116:
“[…]unrelated goods sold under the name ‘Coca-Cola’, or a similar mark: on the one
hand, low-grade engine oil or cheap paint stripper; on the other hand, a select range of
expensive hand-made jewellery. It seems likely that the former, and unlikely that the
latter, would damage the repute of the Coca-Cola Company’s trade mark.[…]” 117
Indeed, blurring and tarnishment seem to precisely cover the use of the trademark in goods or
services that are dissimilar to those for which the trademark is registered. Thereby they seem
prima facie irrelevant as regards use by competitors, the scope of this paper. This is not the
case, however, with the so-called free-riding.
5.2.1 L’Oréal and Others: Riding on the Coat-tails
In L’Oréal and Others, however, the ECJ recognized for the first time in a specific case that
—in addition to these two variations—also something called “riding on the coat-tails”118
amounts to gaining “unfair advantage of the distinctive character or repute” of the mark. 119
The actual wording on the notorious “riding on the coat-tails” in L’Oréal and Others was as
follows:
49. “In that regard, where a third party attempts, through the use of a sign similar to a
mark with a reputation, to ride on the coat-tails of that mark in order to benefit from
its power of attraction, its reputation and its prestige, and to exploit, without paying
any financial compensation and without being required to make efforts of his own in
that regard, the marketing effort expended by the proprietor of that mark in order to
115 L’Oréal and Others para 40. Also Advocate General Jääskinen on Interflora para 92.
116 For American case law, see for example Toys "R" Us, Inc. v. Akkaoui, Civ. Act. No. C96-
3381 CW (N.D. Cal. Oct. 29, 1996). Toy store Toys”R”Us sought to prevent the use of
domain adultrus.com for an adult entertainment site.
117 Inter alia, Advocate General Sharpston on C-252/07 Intel Corporation Inc. v CPM United
Kingdom Ltd. ECR I-08823 para 81 where she continues: “[…]In each case of alleged
tarnishment, it will be necessary to compare the connotations of each mark, in relation either
to the goods or services covered or to the broader message which they may convey, and to
evaluate the damage entailed.”
118 L’Oréal and Others para 102, para 41: “As regards the concept of ‘taking unfair
advantage of the distinctive character or the repute of the trade mark’, also referred to as
‘parasitism’ or ‘free-riding’, that concept relates not to the detriment caused to the mark but
to the advantage taken by the third party as a result of the use of the identical or similar sign.
It covers, in particular, cases where, by reason of a transfer of the image of the mark or of the
characteristics which it projects to the goods identified by the identical or similar sign, there
is clear exploitation on the coat-tails of the mark with a reputation.”
119 See also, Gangjee & Burrell MLR 2010 p.285.

36
create and maintain the image of that mark, the advantage resulting from such use
must be considered to be an advantage that has been unfairly taken of the distinctive
character or the repute of that mark.” [Emphasis added.]
This much-bashed definition of free-riding is actually vague enough for the prohibition of all
uses of reputable trademarks by competitors in keyword advertising. Indeed, does not Suzuki
aim to exploit, without paying any compensation and without required to make any efforts of
their own, the marketing effort of Toyota by its keyword choice? Indeed, the ECJ in my view
effectively found itself in Google France at least theoretically in a cliffhanger worth
multimillions as to whether to go ahead and confirm this scenario.120
5.2.2 Google France and Article 5(2): Marketing of Imitations Constitutes Free-Riding
However, the ECJ made the pragmatic choice to connect the L’Oréal and Others dots to
Google France very selectively, by referring121 to that paragraph of the judgment with the
limiting expression “in the case of offers of imitations for sale” which it did not originally
contain.
While not explicitly excluding the application of the L’Oreal and Others standard onto other
situations, the stance (like the scrapping of the advertising function) should in my view be
perceived as a conscious backtracking by the ECJ from its excessive and much-criticized
L’Oréal and Others stance as regards “riding on the coat-tails”. 122
The ECJ’s final conclusion was as follows:
“That [L’Oreal and Others paragraph 49] case-law is relevant in cases where
advertisers on the internet offer for sale, through the use of signs identical with
reputable trade marks such as ‘Louis Vuitton’ or ‘Vuitton’, goods123 which are
imitations of the goods of the proprietor of those marks.”124 [Emphasis added]
120 And indeed, after the depicted scrapping of the “advertising function” by the ECJ, “riding
on the coat-tails” could provide the sole realistic basis for preventing competitor’s (reputable)
trademark being used in a manner not liable to confuse the user as regards the source of the
advertisement.
122 As explained, in contrast to the other two cases in Google France, the Louis Vuitton
imitation sellers had used ads proclaiming messages such as “Louis Vuitton copies”. In
Google France the ECJ drew a parallel between this activity of selling imitation products and
the facts of L’Oréal and Others which involved defendants providing retailers with
comparison lists indicating the trademark of the fragrance which the applicant’s perfume was
imitating. The actual products were also designed imitatively, though in a manner “unlikely to
mislead experts or public.”
123 The ECJ refers solely to “goods”, as opposed to also “services”.

37
The ECJ referred to use of trademarks per se, and the wording does not single out use in the
actual ad texts125, nor is it relevant to only searches for imitations (as in the query “louis
vuitton fake bags”), as opposed to searches for the original products (as in “louis vuitton
bags”).126
Thus, it effectively deems the use of the trademark in keyword advertising actionable if the
advertised products are imitations of products proclaiming those marks—and indeed, no
emergence of confusion on the part of the public is necessary for an infringement to occur in
these cases.127
A crucial subsequent question is, then, what actually constitutes an imitation within the
meaning of the ECJ’s expression? The definition of imitations made in L’Oréal and Others
(which refers to the Comparative Advertising Directive128) applies to “any imitation or
replica”, in addition to actual illegal counterfeits which the Louis Vuitton case concerned. 129
Furthermore, the question remained whether this is a non-conclusive130 evaluation as to when

the protection for reputable trademarks under Article 5(2) should be applied into the use of
competitor’s trademark in keyword advertising. In other words: are there also other variations
of “taking unfair advantage” of the trademark?131
125 This choice can be welcomed for the reasons stated in the introduction.
126 Thus this prohibition is entirely based on the nature of the marketed goods, in contrast to
the Google France consumer confusion standard which, as examined, concerned the
appearance of the advertisement itself.
127 This is surely a very much welcomed stance by Louis Vuitton and similar companies, the
products of which are being imitated extensively. Also, keyword advertising for imitation
items remains allowed per se but the keywords or the ads must not contain “Louis Vuitton” or
any other reputable trademark. Looking the issue from another angle, the effect is the same
than the one underlined by Jacob LJ in L’Oréal and Others: the advertisers are not allowed to
tell the truth.
128 Article 3(1)(h) of the Directive 84/450/EEC concerning misleading advertising, as ame
ded by Directive 97/55/EC.
129 L’Oréal and Others para 73. Emphasis added. The ECJ also held that “it is irrelevant in
that regard whether the advertisement indicates that it relates to an imitation of the product
bearing a protected mark as a whole or merely the imitation of an essential characteristic of
that product.” (L’Oréal and Others, para 76. emphasis added.)
130 Especially, the ECJ did not expressly elaborate on whether the “classic” use of
competitor’s reputable trademark (as in the depicted Toyota Yaris/Suzuki Swift example)
could amount to “riding on the coat-tails” à la L’Oréal and Others. However, on the basis of
Google France it would seem certain that the ECJ does not consider such use to constitute
actionable “riding on the coat-tails” per se.
131 Also, the question remained whether the other variations of dilution, namely tarnishment
and blurring, could actualize in the keyword advertising context? Advocate General Jääskinen

38
5.3 Advocate General on Interflora: Dilution in Keyword Advertising
In Interflora the High Court explicitly requested guidance (in addition to the aforementioned
question on the Google France consumer confusion standard) on the interpretation of Article
5(2) of the Trademarks Directive.
Firstly, Advocate General Jääskinen to my surprise recognized scenarios where use of

competitor’s trademark in keyword advertising actually can amount to dilution by
constituting blurring. The stance is based on the logic that certain uses by other entities can
contribute to the trademark becoming generic via degeneration which the Advocate General
perceives as a variant within the concept of dilution.132
Mr. Jääskinen proceeds to list two necessary conditions for blurring in the keyword
advertising context using competitor’s trademark:
1. The trademark is mentioned in the ad.
2. The advertiser uses the trademark in a generic sense.133
The combination seems rather far-fetching. Hence, I would suspect that this kind of
infringement will actualize rarely in the future.134 On tarnishment, he merely noted that
Interflora is not about it. The Advocate General then proceeded to examine the ever-exciting
free-riding factor.
5.3.1 Advocate General on Interflora: Free-Riding in Keyword Advertising Revisited
The Advocate General kick-starts the examination on free-riding by referring to his

colleague’s opinion in L’Oréal and Others.135 Advocate General Mengozzi had suggested that
“the test on unfairness becomes applicable only if there is a due cause for using the other
party’s trademark”.136
has recently addressed these questions in Interflora, thanks to a conveniently formulated

preliminary request by a British court.
132 Advocate General Jääskinen on Interflora, para 82.
133 Advocate General Jääskinen on Interflora, para 91.
134 In particular, I would suspect this combination often actualizing with the ad constituting
consumer confusion or descriptive use simultaneously. C-2/00 Hölterhoff [2002] ECR I-4187
para 16 “[…]the reference is made for purely descriptive purposes, namely in order to reveal
the characteristics of the product offered for sale to the potential customer, who is familiar
with the characteristics of the products covered by the trade mark concerned[...]”
136 Advocate General Jääskinen on Interflora para 97, Advocate General Mengozzi on
L’Oréal and Others paras 105 to 111.

39
According to Jääskinen there are three methods137 of using another’s trademark in keyword
advertising. Out of them only the third one constitutes trademark infringement:
1. “Legitimate comparative advertising”138: Allowed

2. “Aiming to offer an alternative product”: Allowed139
3. “Riding on the coat-tails”140: Actionable
While this division appears somewhat logical, its practical implications remain scarce in my
view. The concept of “riding on the coat-tails”—and especially the line between that and
“aiming to offer an alternative product” 141—remains in the context of keyword advertising as
open to doubt as the situation was in the aftermath of Google France. Put differently, we still
do not know if the concept of “riding on the coat-tails” contains anything else in the keyword
advertising context besides the marketing of imitations. 142
Despite these reservations, admittedly, the opinion does contain one adjustment towards
understanding what actionable free-riding means in keyword advertising. Namely, Mr.
Jääskinen proceeds to suggest two preconditions for actionable free-riding to occur in the
ruling’s final conclusions (amongst the actual answers proposed for the national court)143:
1. The trademark has to be mentioned in the ad.
2. The advertiser attempts to benefit from the trademark’s 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 (= ride
on the trademark’s coat-tails).
137 When the ECJ agrees with this division, it would finally confirm the already self-evident
in light of Google France: that the use of competitor’s trademark does not as such constitute
actionable “riding on the coat-tails”.
139 Advocate General Jääskinen on Interflora paras 98 and 99. Para 99: “In the case of
identical or similar goods or services, the purpose of presenting a commercial alternative to
the goods or services protected by a trade mark with a reputation should count as due cause in
the context of modern marketing relying on keyword advertising on the internet. Otherwise
keyword advertising using well-known third party trade marks would be as such prohibited
free-riding[…]“ [Emphasis added.]
140 Advocate General Jääskinen on Interflora paras 103 to 105.
141 After all, are not those ”guilty” of riding on the coat-tails, like the defendant in L’Oréal
and Others, always aiming to “provide an alternative”?
142 Admittedly, I do find it hard to think about any such additional variations that should
legitimately be deemed as actionable free-riding within the meaning of L’Oréal and Others.

40
I find the first provision unfortunate as it enables circumventing the (questionable) rationale
of the free-riding prohibition in keyword advertising. For example an ad proclaiming “Cheap
imitations of the shoes you searched for…But for so much cheaper!” triggered by a shoe-
related search “Adidas Copa Mundial” search would evade liability whilst explicit reference
to the trademark in question (Cheap Copa Mundial Imitations…But for so much cheaper!)
would not. Thus it would create an unequal standing between advertising strategies which
have the identical effect from the advertiser’s and the consumer’s point of view. 144
Perhaps the most peculiar segment145 of the opinion is where the Advocate General elaborates
on the basis of Interflora’s claims that its advertising costs have been increased due to M&S’s
keyword choices. As noted in connection to the “advertising function”, the ECJ had already
dealt with this question in relation to Article 5(1)(a) in Google France. Advocate General
Jääskinen comes to the same conclusion in the 5(2) context: increased pay-per-click costs are
not enough to trigger actionable trademark use, as the advertising function is not affected.146
Jääskinen thus imported the interpretation of the “advertising function” from the
interpretation of Article 5(1)(a) to Article 5(2) in the keyword advertising context.147 I find
using the title “advertising function” for the investigation in question deplorable: keeping the
ECJ’s aforementioned awkward argumentation “alive” is of benefit to no-one. Akin to the
case in Google France, the Advocate General could in my view have merely ignored these
claims altogether.148
144 As Gangjee and Burrell argue similarly in relation to L’Oréal and Others. “Investment in
the development of a brand can only be captured (a) insofar as it attaches to a ‘sign’and (b)
free riding can only be prohibited insofar as the defendant has employed a recognisably
similar sign.The latter point means, for example, that if Bellure had refrained from using the
mark ‘Noa’ in its comparison lists and had instead used a description such as ‘the well known
perfume with the name that sounds like the guy who had the Ark’ then no question of trade
mark infringement could arise, even though Bellure would have been equally ‘guilty’ of free
riding.” In this case, however, such use could be captured on the basis of the keyword use.
Gangjee & Burrell MLR 2010 p.293.
145 Advocate General Jääskinen on Interflora para 100 to 102. I shall repeat in this context
that the relevance of the “advertising function” defined in Google France should not in my
view be overestimated merely due to its title.
146 The weakness of the ECJ’s aforementioned argumentation—based on the proprietor’s
visibility in the natural results—is further emphasized in the fact that the Advocate General
does not even care to refer to this logic per se, merely the result.
147 This explains why Jääskinen had earlier on in the ruling reasoned as to why the
trademark functions should “have a role to play in the application of Article 5(2)” (Advocate
General Jääskinen on Interflora para 64).
148 The L’Oréal and Others definition of “riding on the coat-tails” by definition does not
require detriment caused to the proprietor. Furthermore, as an interconnected matter: in line

41
5.4 The ECJ’s Preliminary Reference Procedure and the Non-Confusing Use of
Competitor’s Trademark in Keyword Advertising
Similarly with the ECJ’s approach to consumer confusion in keyword advertising cases, also
the part on dilutive use highlights an interesting and illustrating sub-development as regards
the division between interpretation and application in the ECJ’s preliminary reference
procedure under 267 TFEU.
As explained, in L’Oréal and Others the ECJ had recognized the existence of the additional
trademark functions. However, it left it then—in line with the textbook interpretation-
application division—for the national court to decide whether an adverse effect had been
caused to those functions of the particular trademarks.
In Google France the ECJ proceeded to single out the relevance of the advertising function
for the particular case. In a way surprisingly, however, this time around the ECJ conducted
the practical application149 itself on whether an adverse effect on this function has been
caused, not referring it as a (supposed) “question of fact” to the national court. Why such a
differing approach?
Apparently the ECJ perceived the legal certainty in a matter of this magnitude to be a matter
of such significance for it to explicitly seek to prevent a scenario of a broad parallel standard
(in addition to the one on consumer confusion) under Article 5(1)(a) existing, the national
interpretation of which would have probably turned out highly inconsistent. In L’Oréal and
Others, the stakes were in this regard much lower, encouraging the ECJ to let the national
courts “do their (supposed) jobs”.150
with many scholars before him, in Interflora the Advocate General cannot resist the
temptation to criticize the L’Oréal and Others free-riding stance, as, according to him, it
leads to a situation that is not “Pareto optimal” because it is non-dependent on any detriment
caused to the trademark proprietor. (Advocate General Jääskinen on Interflora para 94.) The
stance is in my view commendable, and probably especially so in the eyes of the
representatives of the Law & Economics tradition. This criticism is maybe a contributing
factor as to why he selected to conduct the aforementioned pay-per-click investigation.
149 In the latter keyword advertising cases of 2010 the Court has repeated (BergSpechte
paras 31 to 33, Portakabin paras 31 to 33) the “advertising function” maneuver.
150 However, in reality, due to the illustrated artificial nature of this “function”, it can be
speculated that the possibility never existed of the particular examination being left to the
national court; the ECJ’s real aim with the wording selected was to combine in a teleological
fashion its aforementioned interests.

42
As I have highlighted, the ECJ’s stipulations on “riding on the coat-tails” in the context of
keyword advertising in Google France were very brief, leaving plenty of questions open.151
Yet also that examination was rather practical in the sense that the ECJ, as explained,
explicitly pointed out to actionable examples concerning the marketing of imitation products.
Furthermore, in Interflora, the Advocate General left practically nothing for the national
courts’ discretion, proceeding to “mercilessly” apply the three forms of dilution to the actual
case in question all the way through.152
All in all—although the target group is ridiculously tiny—when it comes to the notion of
dilutive use of competitor’s trademark in keyword advertising, the ECJ and the Advocate
General have thus far provided all “the answers” themselves. 153 This approach is not in and of
itself a solution to the vast problems regarding the present lack of legal certainty.154 Yet it
suggests that the ECJ just might understand the significance of a properly functioning
keyword advertising acquis communautaire.
6. A 2010s Proposal For Legal Certainty
The ECJ’s upcoming Interflora ruling could be an excellent opportunity for an inventive,
additional maneuver, would the ECJ seek the most effective countermeasure possible to
torpedo the current lack of legal certainty as regards especially the confusing use of
competitor’s trademark in keyword advertising.
151 This did not derive—at least not entirely—from any particular willingness to leave things
shady. The formulations of the national court’s preliminary request played their significant
part: the wording of the Cour de Cassation’s particular question (Google France para 32) in
relation to which the Article 5(2) was examined, concerned only the referencing service
provider (as opposed to the advertiser). Therefore the ECJ examined the issue only briefly. It
now re-finds the rest of the Article 5(2) issue in front of it in Interflora.
152 Firstly, as regards the aforementioned provisions concerning blurring, the Advocate
General explicitly applied them to the case in question, finding the defendant’s ads not
causing such an effect. (Advocate General Jääskinen on Interflora para 89.) Secondly, when
it came to the question of tarnishment in keyword advertising under Article 5(2), the
Advocate General did not even begin to speculate about potential situations: he merely noted
that “[t]his case is not about tarnisment” (Advocate General Jääskinen on Interflora para
92)—that was it. Thirdly, as for the question on free-riding, Jääskinen remained equally
practical. He explicitly examined the M&S’s wordings of the ads and keyword choices. On
the basis of these findings, he concluded that M&S simply sought to legitimately “offer an
alternative product” instead of “riding on the coat-tails”.(Advocate General Jääskinen on
Interflora para 105).
153 Craig & De Burca, p.494.
154 It should be underlined explicitly that the problems as regards non-confusing use are
significantly smaller than the case is with confusing use, examined in chapter three.

43
To attain such an impact the ECJ could deliver a sampling of guiding visual examples in the
form of e.g. screenshots, depicting legitimate and illegitimate use of competitor’s trademark
in keyword advertising. Indeed, the entire Europe googles: thus the operation would make
sense as the AdWords system is—in contrast to many traditional trademark environments—
essentially identical throughout the EU.
Whereas the ECJ should respect the spirit of the preliminary reference procedure, leave
questions of fact to the national courts and refrain from proactive entanglement in cases not
brought upon it, such problems would neatly be bypassed using hypothetical examples
tailored culturally understandable in all the 27 Member States.
This kind of “judicial activism” should not be perceived as stepping on the toes of the
legislature but rather as healthy pragmatism.

44
BIBLIOGRAPHY
1. Case Law
Court of Justice of the European Union
Preliminary Rulings
26/62 NV Algemene Transport- en Expeditie Onderneming van Gend & Loos v Netherlands
Inland Revenue Administration [1963] ECR I
C-39/97 Canon Kabushiki Kaisha v. Metro-Goldwyn-Mayer Inc. [1998] ECR I-5507
C-375/97 General Motors Corporation v Yplon SA. [1999] ECR I-05421
C-2/00 Hölterhoff [2002] ECR I-4187
C-291/00 LTJ Diffusion [2003] ECR I-2799
“Arsenal Football Club”, C-206/01 Arsenal Football Club plc v Matthew Reed, [2002] ECR
I-10273
C-408/01, Adidas-Salomon AG, formerly Adidas AG, Adidas Benelux BV v. Fitnessworld

Trading Ltd, [2003] ECR I-12537
C-292/00 Davidoff & Cie SA, Zino Davidoff SA v. Gofkid Ltd [2003] ECR I-389
C-245/02 Anheuser-Busch Inc. v Bud jovický Budvar, národní podnik, [2004] ECR I-10989
C-120-04 Medion AG v Thomson multimedia Sales Germany & Austria GmbH, [2005] ECR
I-8551
“Adam Opel”, C-48/05 Adam Opel AG v Autec AG, [2007] ECR I-1017
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ECR I-10273
C-102/07 Adidas AG and Adidas Benelux BV v Marca Mode, C&A Nederland, H&M
Hennes & Mauritz Netherlands BV and Vendex KBB Nederland BV, [2008] ECR I-02439
C-252/07 Intel Corporation Inc. v CPM United Kingdom Ltd, [2008] ECR I-08823
“L’Oréal and Others”, C-487/07 L'Oréal SA, Lancôme parfums et beauté & Cie SNC and
Laboratoire Garnier & Cie v Bellure NV, Malaika Investments Ltd and Starion International
Ltd. [2009] ECR I-0518

45
“Google France”, Joined Cases C-236/08 to C-238/08: Google France, Google, Inc. v Louis
Vuitton Malletier (C-236/08), Viaticum SA, Luteciel SARL (C-237/08), Centre national de
recherche en relations humaines (CNRRH) SARL, Pierre-Alexis Thonet, Bruno Raboin,
Tiger SARL (C-238/08), [2010] ECR I-0000
“Bergspechte”, C-278/08 Die BergSpechte Outdoor Reisen und Alpinschule Edi Koblmüller
GmbH v Günter Guni, trekking.at Reisen GmbH, [2010] ECR I-0000
“Portakabin”, Case C-558/08 Portakabin Ltd and Portakabin BV v Primakabin BV, [2010]
ECR I-0000
References for preliminary rulings
C-91/09, Bundesgerichtshof (Germany) 6 March 2009 — Eis.de GmbH v BBY

Vertriebsgesellschaft mbH, 2009/C 129/06
C-323/09, High Court of Justice (England and Wales), Chancery Division, 12 August 2009
— Interflora Inc, Interflora British Unit v Marks & Spencer plc, Flowers Direct Online
Limited., 2009/C 282/37
Orders of the Court
Order in Case C-62/08 UDV North America, [2009] ECR I-01279
Order in Case C-91/09 Eis.de GmbH v BBY [2010, Vertriebsgesellschaft mbH, ECR I-0000
Advocate General’s opinions
Advocate General Jacobs on C-337/95 Dior, [1997] ECR I-06013
Advocate General Sharpston on C-252/07 Intel Corporation Inc. v CPM United Kingdom
Ltd., [2008] ECR I-08823
Advocate General Mengozzi on L’Oréal and Others, C-487/07 L'Oréal SA, Lancôme
parfums et beauté & Cie SNC and Laboratoire Garnier & Cie v Bellure NV, Malaika
Investments Ltd and Starion International Ltd., [2009] ECR I-05185
Advocate General Maduro on C-236/08-C-238/08 Google France, [2009] ECR I-0000
Advocate General Jääskinen on L’Oréal v. eBay, C-324/09 L'Oréal SA, Lancôme parfums et
beauté & Cie SNC, Laboratoire Garnier & Cie, L'Oréal (UK) Limited v eBay International
AG, eBay Europe SARL, eBay (UK) Limited [2010]

46
Advocate General Jääskinen on Interflora, C-323/09 Interflora Inc, Interflora British Unit v.
Marks & Spencer plc, Flowers Direct Online Limited [2011]
France
Arrêt n° 861 du 13 juillet 2010 (08-13.944) - Cour de cassation - Chambre commerciale,

financière et énonomique

financière et économique

financière et économique
United Kingdom
[2010] EWCA Civ 535 (CA (Civ Div) 2010) A3/2006/2258, High Court of Justice, Royal
Court of Justice, Strand, London 21 April 2010
[2010] EWHC 925 (Ch) Case No: HC08C03440, Royal Courts of Justice, Strand, London,
WC2A 2LL, 29 April 2010
Austria
21st of June 2010 in 17 Ob 3/10f BergSpechte
United States of America
Grotrian v. Steinway & Sons, 523 F.2d 1331, 1342 (2d Cir. 1975)
Toys "R" Us, Inc. v. Akkaoui, Civ. Act. No. C96-3381 CW (N.D. Cal. Oct. 29, 1996)
Rescuecom Corp. v. Google Inc., 562 F. 3d 123 - Court of Appeals, 2nd Circuit 2009.
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Cal. Feb. 15, 2008)
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Beuth, Marie-Catherine: “Google soupçonné de manipuler ses services”,

http://www.lefigaro.fr/societes/2011/01/04/04015-20110104ARTFIG00692-google-
soupconne-de-manipuler-ses-services.php, Le Figaro, 4.1.2011, visited 8.4.2011
Burrell, Robert & Gangjee, Dev: “Trade Marks and Freedom of Expression: A Call for
Caution” IIC 2010, 41(5), 544-569

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Burrell, Robert & Gangjee, Dev: “Because You’re Worth It: L’Oréal and the Prohibition on
Free Riding”, The Modern Law Review (2010) 73(2) 282-304
Clark, Birgit: “ECJ Decides in French Google AdWord referrals: more seek than find?”,
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Craig, Paul & De Burca, Gráinne “EU Law”, Oxford University Press, 2008
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contemporary research”, Edward Elgar Publishing Limited, 2008
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33 U.S.F. L. Rev. 641 (1998-1999)
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Pihlajarinne, Taina: “Toisen tavaramerkin sallittu käyttö”, WS Bookwell Oy 2010
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4. Other
Austrotrabant's Blog: “Where To Draw The Line? The Main Question Left After Google
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ecj-in-google-france-left-the-national-courts-to-decide/#more-3228 , visited 1.12.2010
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https://adwords.google.com/support/aw/bin/answer.py?hl=en&answer=177578, visited
14.11.2010

48
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policy”, 4.8.2010, http://adwords.blogspot.com/2010/08/update-to-canadian-uk-and-ireland-
ad.html, visited 14.11.2010
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http://advertising.microsoft.com/uk/support-centre/search-advertising/intellectual-property-
guidelines, visited 22.2.2011

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“But I Still Haven’t Found What I’m Looking For” – The ECJ and The Use of

Competitor’s Trademark in Search Engine Keyword Advertising

Tavaramerkki – Hakukoneet – Avainsanat – EU-tuomioistuin – Google – Tavaramerkin

1. Introduction: Googlers, Trademarks and Thieves ............................................................... 4

1.1 The Concept ................................................................................................................ 4

1.2 Actionable Confusing and Non-Confusing Use ............................................................ 6

1.3 The ECJ and Keyword Advertising in Europe .............................................................. 7

2. The Seminal Google France .............................................................................................. 9

2.1 Preliminary Observations on the Basis of the Trademarks Directive ........................... 11

2.2 The Relevant Trademark Functions ............................................................................ 13

3. Adverse Effect on the (Critical) Function of Indicating Origin in Keyword Advertising:

3.5.1 Advertisers and Legal Certainty........................................................................... 21

4. Google’s Policy Conclusions post-Google France ........................................................... 27

5.1.1 The Curious Application of the Advertising Function .............................................. 31

5.2.1 L’Oréal and Others: Riding on the Coat-tails ...................................................... 35

5.3 Advocate General on Interflora: Dilution in Keyword Advertising ............................. 38

5.3.1 Advocate General on Interflora: Free-Riding in Keyword Advertising Revisited . 38

6. A 2010s Proposal For Legal Certainty ...................................................................... 42

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1. Introduction: Googlers, Trademarks and Thieves

1.1 The Concept

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1.2 Actionable Confusing and Non-Confusing Use

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unlawful “free-riding”6 as well. This concept is one variation of a phenomenon called

1.3 The ECJ and Keyword Advertising in Europe

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2. The Seminal Google France

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operator, by means of an agreement on paid internet referencing, of a keyword triggering, in

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concentrated almost exclusively on Google’s liability, as opposed to that of the advertiser.22

2.1 Preliminary Observations on the Basis of the Trademarks Directive

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Use of a sign identical with the trademark in question

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2.2 The Relevant Trademark Functions

1. the function of indicating origin.

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3. Adverse Effect on the (Critical) Function of Indicating Origin in Keyword

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The selection of any trademark as an advertisement-triggering keyword is always

3.1 Preliminary Remarks on “Normally Informed and Reasonably Attentive Internet

38 Similarly Portakabin para 34, BergSpechte para 36.

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Understanding its doctrinal implications necessitates a return to the wordings of the

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46 21st of June 2010 in 17 Ob 3/10f BergSpechte.

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keywords for an internet referencing service is liable to be prohibited pursuant to Article 5 of

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3.5.1 Advertisers and Legal Certainty

When it comes to the question on consumer confusion in keyword advertising, an arguably

In my view, the EU-wide legal harmonization of an advertising concept of this magnitude

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62 Thus, obviously, during and not prior the ongoing proceedings.

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“To my mind the display of the ad as a consequence of typing ‘interflora’ into a

1. What constitutes “some users”?