Freedom, security and justice -- or skiing with AdWords

If you didn't know that Case C‑523/10 Wintersteiger AG v Products 4U Sondermaschinenbau GmbH was a major intellectual property dispute on which the Court of Justice of the European Union was asked for guidance by the Oberster Gerichtshof, Austria, you might have thought it was about something quite different altogether: the court's Curia calendar curiously labelled it a ruling on "Freedom, Security and Justice". So what is this case all about?

In short, Austria-based Wintersteiger, which made and sold internationally various ski and snowboard servicing tools, replacement parts and accessories, owned the Austrian trade mark WINTERSTEIGER since 1993 and also held a registration for it in neighbouring Germany. A competitor, German-based Products 4U, made and sold, inter alia, accessories forWintersteiger's tools.  Wintersteiger did not sell or authorise the sale of its products by Products 4U. Nevertheless, Products 4U registered ‘Wintersteiger’ as a Google AdWord in respect of searches carried out via the top-level domain for Germany (‘.de’).

Whenever the word ‘Wintersteiger’ was entered into the Google search engine for the ‘.de’ top-level domain, an advertising link with the heading ‘Advertisement’ appeared on the right-hand side of the page in addition to a link to Wintersteiger’s website. The text of the advertisement included expressions such as the following: ‘ski workshop accessories’, ‘ski and snowboard tools’, and ‘maintenance and repair’. Clicking on the advertising link directed the user to a section of the Products 4U website entitled ‘Wintersteiger Accessories’.

While Google ran an Austrian top-level domain (‘.at’), the internet site www.google.de could also accessed in Austria. This is significant if you bear in mind that the two countries share the same language.

Wintersteiger brought an action for an injunction in Austria, together with an application for protective measures, requiring Products 4U to stop using the trade mark WINTERSTEIGER as an AdWord on the google.de search engine. Initially this application was ruled inadmissible on the grounds of lack of international jurisdiction in that, since the AdWord concerned was limited to google.de, there was insufficient connection with Austrian territory. On appeal, the Oberlandesgericht Linz took the opposite view: there was jurisdiction, it held, but still dismissed the action as to the substance. A further appeal to the Oberster Gerichtshof resulted in that court referring the following questions to the Court of Justice for a preliminary ruling:

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

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

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

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

2. If Question 1.3 is answered in the affirmative:

Which criteria are to be used to determine whether jurisdiction under Article 5(3) of the Brussels I Regulation is established where a trade mark granted in the State of the court seised is used as an AdWord on a search engine website with a country-specific top-level domain different from that of the State of the court seised?’

Advocate General Advocate General Pedro Cruz Villalon advised the CJEU to answer all these questions quite simply:

‘Where conduct occurs via the internet which is liable to infringe a national trade mark registered in a Member State, Article 5(3) of Regulation No 44/2001 must be interpreted as meaning that it attributes jurisdiction:

– to the courts of the Member State in which the trade mark is registered

– and to the courts of the Member State where the means necessary to produce an actual infringement of a trade mark registered in another Member State are used.

This Kat wondered, at the time, about a scenario in which damage is done to a trade mark owner's interest in his registered trade mark as a result of a chain of several events, each possibly being in a different country. These events might include both causae sine qua non and causae causantes (causes of the conditions under which the damage was able to be inflicted and causes of the events that directly inflict the damage).  He hoped that the Court of Justice would clarify this in its ruling. As it turns out, the CJEU said just this:

"Article 5(3) of ... Regulation ... 44/2001 ... must be interpreted as meaning that an action relating to infringement of a trade mark registered in a Member State because of the use, by an advertiser, of a keyword identical to that trade mark on a search engine website operating under a country-specific top-level domain of another Member State may be brought before either the courts of the Member State in which the trade mark is registered or the courts of the Member State of the place of establishment of the advertiser".

The IPKat notes how very fact-specific the ruling is.  Does the court intend to limit it only to situations in which the allegedly infringing use has to be "by an advertiser, of a keyword identical to that trade mark" in circumstances in which that use is "on a search engine website operating under a country-specific top-level domain of another Member State "?  He rather liked the AG's formulation of "where the means necessary to produce an actual infringement of a trade mark registered in another Member State are used", a phrase which is not found in this morning's ruling.

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