Keywords have become a major advertising medium. When someone types a word into a search engine, adverts are shown alongside the 'natural' results. Companies bid for the right for their ads to be displayed when particular search terms are entered.
The German Federal Supreme Court (BGH) has published its opinion on three appeals that it was hearing on the issue. It has asked the ECJ to advise it on the question at the heart of these cases.
A company which had a trade mark for 'bananabay' objected to a competing erotic product firm's use of that term as a trigger for search engine advertising.
Because German law in this area is based on EU law, the BGH has asked the ECJ to decide whether the keyword activity constitutes use of the term as a trade mark, and therefore if it breaks EU trade mark law.
The ECJ has already been asked to consider the same issue by a French court. It is hearing an appeal from Google in a case involving handbag-maker Louis Vuitton over whether the typing of that brand into Google's search engine should be allowed to bring up adverts for fake replicas of Louis Vuitton products.
Keyword advertising has become huge business, and accounts for the majority of search giant Google's revenue. Until last year the company barred the use of other people's trade marks as keywords outside of North America.
In May last year, though, the company reversed that policy for the UK and Ireland, allowing keywords to be bid on by anybody, even when they were trade marks.
In a second case the BGH said that one company's purchase of the keyword 'pcb' was allowed because the term, an acronym of printed circuit board, was descriptive.
The company had been sued by a printed circuit board manufacturer called PCB Pool, but typing that term into the search engine threw up ads for the competitor company which had purchased the right to the keyword 'pcb'.
The court said that the term was a specialist one and was descriptive of printed circuit boards, so should be allowed. In doing so it overturned a lower court's ruling.
In a third case the BGH ruled on a case that was not referred to the ECJ because it hinged on a piece of domestic German law that did not have its roots in EU law.
Company names are protected in Germany whether they are registered as trade marks or not. Beta Layout complained that another company's registration of that term as a keyword violated its rights, but the court said that it did not because internet users are capable of distinguishing between paid-for advertising and normal search engine results.
Last year the UK courts ruled on a keyword case involving the food trade mark 'Mr Spicy' and Yahoo!'s display of ads for Sainsbury's. The High Court said that there was no trade mark infringement involved, but in that case only the word 'spicy' and not the exact trade mark 'Mr Spicy' had been sponsored.
In 2004 the Court of Appeal said that trade mark infringement had not occurred when ads for Reed Business Information's totaljobs.com site appeared when a user searched for the term 'Reed'. Reed Executive lost the case, though again the keyword was not identical to Reed Executive's trade mark.
