Order of the Court of 26 March 2010 (reference for a preliminary ruling from the Bundesgerichtshof (Germany)) — Eis.de GmbH v BBY Vertriebsgesellschaft mbH

(Case C-91/09) (1)

(First subparagraph of Article 104(3) of the Rules of Procedure - Trade marks - Internet - Keyword advertising - Display, on the basis of a keyword identical to a trade mark, of an advert of a competitor to the proprietor of that trade mark - Directive 89/104/EEC - Article 5(1)(a))

2010/C 234/26

Language of the case: German

Referring court

Bundesgerichtshof (Germany)

Parties to the main proceedings

Applicant: Eis.de GmbH

Defendant: BBY Vertriebsgesellschaft mbH

Re:

Reference for a preliminary ruling — Bundesgerichtshof Karlsruhe — Interpretation of Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1) — Inscription of a sign similar to a trade mark with a service provider operating an Internet search engine in order automatically to have displayed on the screen, after entry of that sign as a search term, adverts for goods or services identical to those for which the trade mark in question was registered (‘keyword advertising’) — Absence of authorisation from the proprietor of the trade mark — Classification of that use of the mark as ‘use’ within the meaning of the provision cited above

Operative part of the order

Article 5(1)(a) of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that the proprietor of a trade mark is entitled to prohibit an advertiser from advertising, on the basis of a keyword identical with that trade mark which that advertiser has, without the consent of the proprietor, selected in connection with an internet referencing service, goods or services identical with those for which that mark is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty to ascertain whether the goods or services referred to therein originate from the proprietor of the trade mark or an undertaking economically connected to it or, on the contrary, originate from a third party.

(1)  OJ C 129, 6.6.2009.