Is the use of protected designations in Google AdWord advertising permissible? – Federal Court of Justice issues three rulings
In three decisions announced on January 22, 2009, the First Civil Senate of the Federal Court of Justice (BGH), which is responsible for trademark law, addressed the trademark law assessment of using third-party designations as keywords within the scope of advertising with so-called AdWord ads offered by the Google search engine. In two cases, the Federal Court of Justice denied the claims of the designation owners; in the third case, it referred a question concerning the interpretation of the Trademark Directive to the Court of Justice of the European Communities (ECJ).
The proceedings concerned the question, which had been assessed differently in lower court jurisprudence, of whether it constitutes a trademark infringement when a third party specifies a third-party designation (i.e., a trademark or a company name) or a designation similar to the protected mark as a keyword to a search engine operator, with the aim that upon entering this designation as a search term into the search engine, an advertisement of the third party (with a link to their website), identified as such, appears in an ad block spatially separated from the search results, advertising their goods or services. In the decided cases, the advertisement contained neither the third-party designation used as a search term nor any other reference to the designation owner or the products offered by them.
1. Decision of the Federal Court of Justice of January 22, 2009 – I ZR 125/07 – Bananabay:
In the first proceedings – I ZR 125/07 – the defendant provider of erotic articles had specified the keyword “bananabay” to Google. “Bananabay” is protected as a trademark for the plaintiff, who also sells erotic articles online under this designation. If a designation used as a keyword – as in this case – is identical to a third-party trademark and is also used for goods or services identical to those for which the third-party trademark enjoys protection, the assumption of trademark infringement in such a case depends solely on whether the use of the protected designation as a keyword constitutes use as a trademark within the meaning of the German Trademark Act. Since the provisions of German law are based on harmonized European law, the Federal Court of Justice suspended the proceedings to refer this question to the European Court of Justice for a preliminary ruling under Article 234 of the EC Treaty.
Decision of the Federal Court of Justice of January 22, 2009 – I ZR 125/07 – Bananabay
Lower Courts: Regional Court Braunschweig – Judgment of March 7, 2007 – 9 O 2382/06; Higher Regional Court Braunschweig – Judgment of July 12, 2007 – 2 U 24/07 – MMR 2007, 789
2. Judgment of the Federal Court of Justice of January 22, 2009 – I ZR 139/07 – pcb:
In the second proceedings – I ZR 139/07 – two companies offering printed circuit boards online were in dispute. The trademark “PCB-POOL” is protected for the plaintiff. The defendant had registered the letters “pcb” as a keyword with Google, which are understood by the relevant professional circles as an abbreviation for “printed circuit board”. The AdWord registration of “pcb” resulted in an advertisement for the defendant's products appearing in the separate ad block next to the search results whenever “PCB-POOL” was entered into the Google search engine. In this case, the Federal Court of Justice dismissed the action, overturning the appellate judgment. As a rule, the trademark owner cannot prohibit the use of a descriptive term (here “pcb”), even if it is used in a trademark-like manner and thereby creates a risk of confusion with the protected trademark. In this case, the Federal Court of Justice assumed a descriptively permissible use under trademark law. Since a trademark infringement was to be denied for this reason alone, the legal question referred to the European Court of Justice in proceedings I ZR 125/07 was no longer relevant.
Judgment of the Federal Court of Justice of January 22, 2009 – I ZR 139/07 – pcb
Lower Courts: Regional Court Stuttgart – Judgment of March 13, 2007 – 41 O 189/06, Higher Regional Court Stuttgart – Judgment of august 9, 2007 – 2 U 23/07 – WRP 2007, 649
3. Judgment of the Federal Court of Justice of January 22, 2009 – I ZR 30/07 – Beta Layout:
The plaintiff from the second proceedings – who operates under the company name “Beta Layout GmbH” – was also involved in the third proceedings – I ZR 30/07. Here, the issue was that another competitor had registered the designation “Beta Layout” as a keyword with Google. In this case too, whenever an internet user entered “Beta Layout” as a search term on Google, an ad block with an advertisement for the competitor's products appeared next to the search results. In this instance, the Federal Court of Justice affirmed the decision of the appellate court, which had denied an infringement of the company name and a corresponding claim for injunctive relief, on the grounds that the court found a lack of the likelihood of confusion necessary for an infringement of the company name. The internet user would not assume that the advertisement appearing in the separate ad block next to the search results originated from Beta Layout GmbH. According to the Federal Court of Justice, this factual finding regarding public perception was not objectionable. Since the protection of company names, unlike trademark protection, is not based on harmonized European law, a referral to the European Court of Justice was not considered in these proceedings.
Judgment of the Federal Court of Justice of January 22, 2009 – I ZR 30/07 – Beta Layout
Previous instances: LG Düsseldorf – Judgment of April 7, 2006 – 34 O 179/05; OLG Düsseldorf – Judgment of January 23, 2007 – 20 U 79/06 – WRP 2007, 440 Source: Press Release No. 17/2009 of the BGH from January 22, 2009
Goldberg Rechtsanwälte
Attorney-at-law Michael Ullrich, LL.M. (Information Law)
Specialist Lawyer for Information Technology Law (IT Law)
E-mail: m.ullrich@goldberg.de
