PORTAKABIN Adword Trade Mark Infringement?

In Portakabin Limited and Portakabin BV (PORTAKABIN) v Primakabin BV (PRIMAKABIN), Primakabin sold various mobile building structures, including those made by Portakabin. Portakabin sued Primakabin on the basis that Primakabin’s use of the PORTKABIN trade mark in an internet advertisement for 'used portakabins' infringed its registered trade mark for PORTAKABIN.

At first instance, Portakabin were unsuccessful because the court held that the PORTAKABIN trade mark was not being used to distinguish goods but was merely directing consumers to Primakabin’s website. On appeal, Portakabin were partially successful and Primakabin were ordered to refrain from using the word PORTAKABIN in adverts for the mobile buildings. However, Portakabin appealed to the Hoge Raad Court in the Netherlands for a ruling on whether Primakabin’s use of the PORTAKABIN trade mark in adverts amounted to use of the mark in relation to goods or services.

The European Court of Justice held that:

• A trade mark owner can prohibit an advert using a keyword identical or similar to a registered trade mark for identical goods or services without the consent of the proprietor where the advert does not enable consumers to confirm whether the goods or services referred to in the advert originate from the trade mark owner or from an economically linked undertaking.
• Use by advertisers of identical or similar signs to the registered trade mark as keywords is liable to be prohibited, but it will be for the national court to determine whether the use is in accordance with honest industrial or commercial practices.
• A trade mark owner cannot prohibit advertisers from advertising the resale of goods where those goods have already been put on the market in the European Economic Area (EEA) by the proprietor or with his consent unless there is a legitimate reason to do so, such as for example, there being a serious risk of detriment to the reputation of the trade mark.
• The national court cannot find that the advert gives the impression that the reseller and the trade mark owner are linked, or that that the advert is seriously detrimental to the reputation of the trade mark merely on the basis that the advert uses the trade mark to indicate that goods are being resold, eg, by using words such as 'used' or 'second hand'.
• The national court is obliged to find a legitimate reason for prohibiting the advert where the reseller, without the consent of the trade mark owner, removes all references to the trade mark from goods already placed on the market and replaces it with a label bearing the resellers name.
• The national court is obliged to find that specialist retailers of second hand goods that bear another person’s trade mark cannot be prohibited from using the trade mark to advertise his goods to the public unless there is a serious risk of damage to the image of the trade mark.

The decision is likely to be met with mixed reviews. On the one hand, it provides some level of comfort to trade mark owners whose trade marks are being used in adverts by third parties. On the other, unless there is a 'legitimate' reason which leads to detriment to the reputation of the trade mark, trade mark owners may find it difficult to enforce their rights in the trade mark where the trade mark is being used in an advert but where the goods have already been put on the market in the EEA by the proprietor or with his consent.