Is the use of protected terms in Google's AdWord advertising permitted ? - BGH makes three decisions
In three decisions pronounced on 22 January 2009, the First Civil Senate of the Federal Court of Justice (Bundesgerichtshof, BGH), which is also responsible for trade mark law, dealt with the assessment under trade mark law of the use of third-party trade marks as keywords in the context of the possibility of advertising with so-called AdWord ads opened up by the search engine Google. In two cases, the Federal Supreme Court denied claims of the trade mark owners, in the third case it referred a question to the Court of Justice of the European Communities (ECJ) on the interpretation of the Trade Mark Directive.
The proceedings dealt with the question, which was judged differently by the courts of appeal, whether it constitutes an infringement of a trade mark if a third party indicates a third party's trade mark (i.e. a trade mark or a company name) or a designation similar to the protected sign as a keyword to a search engine operator with the aim that, when this designation is entered as a search word in the search engine, an advertisement of the third party marked as such (with a link to its website) appears as an advertisement for its goods or services in an advertising block spatially separated from the hit list. In the cases decided, the advertisement contained neither the third party's sign used as a search term nor any other reference to the trade mark proprietor or to the products offered by the latter.
1. decision of the BGH of 22 January 2009 - I ZR 125/07 - Bananabay:
In the first case - I ZR 125/07 - the defendant provider of erotic articles had indicated the keyword "bananabay" to Google. "Bananabay" is protected as a trade mark for the plaintiff, who also sells erotic articles on the internet under this designation. If a designation used as a keyword is - as in this case - identical with another's trade mark and if, moreover, it is used for goods or services identical with those for which the other's trade mark enjoys protection, the assumption of trade mark infringement in such a case depends only on whether the use of the protected designation as a keyword constitutes use as a trade mark within the meaning of the Trade Mark Act. Since the provisions of German law are based on harmonised European law, the Federal Court of Justice stayed the proceedings in order to refer this question to the European Court of Justice for a preliminary ruling under Article 234 of the EC Treaty.
Order of the BGH of 22 January 2009 - I ZR 125/07 - Bananabay
Previous instances: Regional Court of Braunschweig - Judgment of 7 March 2007 - 9 O 2382/06; Higher Regional Court of Braunschweig - Judgment of 12 July 2007 - 2 U 24/07 - MMR 2007, 789
2. judgement of the BGH of 22 January 2009 - I ZR 139/07 - pcb:
In the second case - I ZR 139/07 - two companies offering printed circuit boards via the internet were opposed. For the plaintiff, the trade mark "PCB-POOL" is protected. The defendant had registered the letters "pcb" as a keyword with Google, which is understood by the specialist circles addressed as an abbreviation for "printed circuit board". The adword registration of "pcb" resulted in an advertisement for the defendant's products also appearing in the separate ad block next to the hit list when "PCB-POOL" was entered in Google's search engine. The Federal Court of Justice dismissed the action in this case, setting aside the appeal judgment. As a rule, the trade mark proprietor cannot prohibit the use of a descriptive indication (in this case "pcb") even if it is used as a trade mark, thereby creating a likelihood of confusion with the protected trade mark. In this case, the Federal Supreme Court assumed a descriptive use permitted under trademark law. Since a trademark infringement was to be denied for this reason alone, the legal question submitted to the European Court of Justice in the proceedings I ZR 125/07 was no longer relevant.
Judgment of the Federal Supreme Court of 22 January 2009 - I ZR 139/07 - pcb
Previous instances: Stuttgart Regional Court - Judgment of 13 March 2007 - 41 O 189/06, Stuttgart Higher Regional Court - Judgment of 9 August 2007 - 2 U 23/07 - WRP 2007, 649
3. judgement of the BGH of 22 January 2009 - I ZR 30/07 - Beta Layout:
The third case - I ZR 30/07 - also involved the plaintiff of the second case - it uses the company name "Beta Layout GmbH". The issue here 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 hit list. In this case, the Federal Court of Justice upheld the decision of the Court of Appeal, which had denied an infringement of the company name and a corresponding claim for injunctive relief on the grounds. The court found that the likelihood of confusion required for infringement of the company name was lacking. The internet user would not assume that the advertisement appearing in the separate ad block next to the hit list originated from Beta Layout GmbH. In the opinion of the Federal Court of Justice, this factual determination of the public's understanding was not objectionable. Since the protection of company names, unlike trade mark protection, is not based on harmonised European law, a referral to the European Court of Justice was out of the question in these proceedings.
Judgment BGH of 22 January 2009 - I ZR 30/07 - Beta Layout
Previous instances:LG Düsseldorf - Judgment of 7 April 2006 - 34 O 179/05; OLG Düsseldorf - Judgment of 23 January 2007 - 20 U 79/06 - WRP 2007, 440 Source: Press release no. 17/2009 of the BGH of 22 January 2009
Goldberg Attorneys at Law
Attorney at Law Michael Ullrich, LL.M. ( Information Law)
Specialist lawyer for information technology law (IT law)
E-mail: m.ullrich@goldberg.de
