The case: The Finnish producer of buoyant dredgers, Lännen MCE, labelled its products with its Union trademark WATERMASTER.

 

 

It then became aware that on the internet two German sister companies, Senwatec and Berky, were also using the word WATERMASTER for similar products. Lännen subsequently sued both companies for trademark infringement in Finland. The Finnish court asked the Court of Justice of the European Union to clarify the matter of jurisdiction.

The Court stated that the mere ability of internet users to access a website in another country is not sufficient to enable action to be taken against an entity in the other country. What is required is that the entity’s internet advertising addresses the consumers or traders in that country.

Such targeting may be carried out in various ways: through the international nature of the activity; the use of a foreign language or currency; the provision of telephone numbers with international dialling codes; expenditure on an internet referencing service; the use of a foreign top-level domain name; or the mention of an international clientele composed of clients residing in different Member States.

In the WATERMASTER case, the targeting of Finnish consumers or traders was achieved via an Adwords ad. When the keyword WATERMASTER was entered into the Finnish Google website – ‘www.google.fi’ – a link to the German competitors’ products appeared. An Adwords ad appears when the keyword is called up only if a company has paid for this service beforehand. Because the German company had purchased the publishing service on ‘www.googel.fi’, it was considered that the ad was intended to address Finnish consumers or traders. The Finnish court therefore had jurisdiction.

Uploading pictures with images of competing German products on the photo-sharing website ‘Flickr.com’, on the other hand, did not constitute the targeting of Finnish consumers. The source text of the images contained the hidden meta tag WATERMASTER, which made it possible to call up ‘Flickr.com’ when WATERMASTER was entered at ‘www.google.fi’.

The intended function of meta tags is to make it easier for search engines to better identify uploaded images and thereby improve the ranking of search engine hits. Admittedly, this can lead to trademark infringement. However, as well as the fact that Google no longer takes such hidden meta tags into account for its hit ranking, ‘Flickr.com’ could not be reached under a Finnish domain – only under the generic top-level domain ‘.com’, which was insufficient to class consumers in Finland as being ‘addressed’. The Finnish court did not have jurisdiction in this respect.

Court of Justice of the European Union, order for reference of 27 April 2023, C-104/22.

On the question of whether the Finnish court would be able to find that an infringement of the EU trademark WATERMASTER had arisen from the Adwords ad on ‘www.google.fi’, the Court of Justice naturally did not give a pronouncement; it had only been asked about the jurisdiction of the Finnish court. Nor is the decision of the Finnish court available.

However, if one were to take German case law as a basis, an infringement of the EU trademark could be assumed. Adwords ads do not usually constitute an infringement of a trademark, because the consumer would not normally connect the spatially separated ad, called up via the trademark search term, with the trademark. However, the Adwords ad contained the following link to the German website selling the competing products:

Watermaster – Multipurpose amphibian dredgers – Senwatec.de

Lännen’s trade-marked word WATERMASTER was thus used in the advertisement itself. The machines that appeared in the advertisement were therefore linked to Lännen’s trademark, which was likely to have created a likelihood of confusion.

Learnings: When advertising on the internet, you should check whether the form of advert might address consumers in other Member States of the European Union, for example through paid online advertisements in these states. If this is the case, you risk being sued in that Member State. You should therefore carry out checks to ascertain whether trademark or other rights could be infringed there. This might be the case if the advertisement contains a foreign trademark word or otherwise establishes a connection with such trademark. Hidden meta tags on websites operating under a generic top-level domain such as ‘.com’, on the other hand, would not generally establish the jurisdiction of a foreign court in terms of an infringement action. If in any doubt, you should seek detailed advice on these complex issues.