Intellectual Property Law

BergSpechte owns the figurative mark featured top-right in this post, which is registered in Classes 25 (clothing), 39 (travel services) and 41 (various teaching, entertainment and sporting services). Another company, trekking.at Reisen, competed with BergSpechte in providing ?outdoor? tours. That company purchased ?Edi Koblmüller? and ?Bergspechte? as AdWords that generated the appearance of its own advertisements as sponsored links. BergSpechte sought and obtained an interim injunction from the Landesgericht Wels and protective measures were imposed on trekking.at Reisen, prohibiting it from directing users to its own home page by a link on the pages containing lists of hits obtained using internet search engines by entering the search terms ?Edi Koblmüller? and/or ?Bergspechte?. The action eventually reached the Austrian Oberster Gerichtshof (Supreme Court) which referred the following questions for a preliminary ruling:

"1. Must Article 5(1) of the ... Council Directive 89/104 ... be interpreted as meaning that a trade mark is used in a manner reserved for the proprietor of the trade mark if the trade mark or a sign similar to it (such as the word component of a word and figurative trade mark) is reserved as a keyword with a search engine operator and advertising for identical or similar goods or services therefore appears on the screen when the trade mark or the sign similar to it is entered as a search term?

2. If the answer to Question 1 is yes:

(A) Is the trade mark proprietor's exclusive right infringed by the utilisation of a search term identical with the trade mark for an advertisement for identical goods or services, regardless of whether the accessed advertisement appears in the list of hits or in a separate advertising block and whether it is marked as a 'sponsored link'?

(B) In respect of the utilisation of a sign identical with the trade mark for similar goods or services, or the utilisation of a sign similar to the trade mark for identical or similar goods or services, is the fact that the advertisement is marked as a 'sponsored link' and/or appears not in the list of hits but in a separate advertising block sufficient to exclude any likelihood of confusion?"