In four cases in 2010 and 2011, the European Court of Justice (ECJ) has given guidelines to assess trademark infringement in keyword advertising (adwords). The latest judgments Interflora / Marks & Spencer (case C-323/09) is dated on 22 September 2011. It is up to the national Courts to work out in greater detail these guidelines in respect of specific cases. The Court of Appeal in The Hague, The Netherlands, is the first Dutch of Court of Appeal that applied the guidelines of the ECJ in a case called Tempur/Medicomfort.

The case relates to the trademark TEMPUR (a trademark with a reputation) registered for mattresses. A small shop bought the keyword TEMPUR and showed an advertisement that linked to its own website when the internet public selected TEMPUR as a search term in the Google search engine. The advertisement showed contained the following text (translated freely): “Need a new mattress? Order Medicomfort mattress. Up to 40% cheaper than other top marks!”

Tempur claimed that it could stop the use of this keyword advertising on grounds of trademark infringement and referred to the Interflora judgment. According to the ECJ, trademark infringement is apparent if the advertisement does not enables the reasonable well informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether goods or services referred to by the advertisement originate from the proprietor of the trademark or an undertaking economically connecting to it or, on the contrary, originate from a third party. According to Tempur that was actually the situation in this case, because the public might think that the mattresses offered in the advertisement are a sub-trademark of Tempur or that the advertisement is originating from a dealer of Tempur.

However, the Court of Appeal in The Hague assessed different by considering (freely translated): “The internet users in the current timeframe, taking into account their knowledge of and experience in the way internet in general and more specifically search engines work including the experience that advertisements (adwords) appear in colored frames above or at the right side of the search results, are aware of the fact when they are selecting a trademark as keyword in a search engine like Google there will not only appear search results linked to the trademark owner but also advertisements of third parties.” On this assumption the Court considers that the advertisement concerned is not too vague and the internet users will see the advertisement as the offer of a alternative for TEMPUR mattresses. This is an important conclusion which is motivated by the Court as follows:
1. The text of the hyperlink in the advertisement is stated in general wording;
2. The content of the advertisement makes clear that the name of the provider/supplier is “Medicomfort” (the use of captions is relevant);
3. The products offered in the advertisement are set off against other top trademark products and TEMPUR is known to the internet users as a top trademark;
4. The trademark TEMPUR is not mentioned in the advertisement.
In view hereof, there will be no confusion about the origin of the mattresses offered in the advertisement with TEMPUR mattresses.

The same considerations come into play when assessing whether the advertisements dilute the TEMPUR trademark and whether unfair advantage is taken of the distinctive character or repute of the TEMPUR trademark (‘free-riding’), which Tempur also claimed. In short, this is not the case according to the Court because the internet public sees the advertised products as an alternative for TEMPUR mattresses. Also, the advertisement is not otherwise misleading.

The Tempur/Medicomfort case shows that – at least in the Netherlands – no stringent demands are set for internet advertisers using (reputed) trademarks for keyword advertisements. As long as the information in the adword advertisement mentions the own name or trademark of the advertiser and clearly presents as an alternative for the goods and/or services of the trademark holder, keyword advertising using other trademarks is principally permitted.

Jaap Kronenberg