The First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trade mark law, has confirmed and clarified its case law on the admissibility of keyword advertising, in which internet users are shown the advertising of a third party on the basis of a keyword that is identical to or confusable with the trade mark.
The applicant is the owner of the exclusive licence for the German trade mark "MOST", registered inter alia for pralines and chocolate. It operates a "MOST shop" under the internet address "www.most-shop.com", through which it sells high-quality confectionery and chocolate products. The defendant maintains an online shop for gifts, chocolates and chocolate under the internet addresses "www.feinkost-geschenke.de" and "www.selection-exquisit.de". In January 2007, the defendant placed an AdWords advertisement for its internet shop on the search engine Google. The defendant had selected the term "chocolates" with the option "largely matching keywords" as the keyword, the entry of which in the search mask was to trigger the appearance of the advertisement. The list of "largely matching keywords" also included the keyword "most pralines". If a user entered the search term "MOST pralines", the following advertisement of the defendant appeared to the right of the search results (spread over four lines): "Pralines/Wines, chocolates, delicatessen, presents/Genießen und schenken!/www.feinkost-geschenke.de." Via the link "www.feinkost-geschenke.de" given in the advertisement, the search engine user reached the defendant's homepage under the internet address "www.selection-exquisit.de". The defendant's online shop did not sell any products with the sign "MOST".
The plaintiff is of the opinion that the defendant infringed the right to the trade mark "MOST" by placing the advertisement. It filed a claim against the defendant for injunctive relief, among other things. The District Court upheld the action. The defendant's appeal was unsuccessful. The Federal Court of Justice overturned the appeal judgement and dismissed the action.
The Federal Supreme Court has confirmed its case law (BGH, judgement of 13 January 2011 - I ZR 125/07, GRUR 2011, 828 - Bananabay II; judgement of 13 January 2011 - I ZR 46/08, MMR 2011, 608). January 2011 - I ZR 46/08, MMR 2011, 608), according to which in the case of "keyword advertising" a trade mark infringement from the point of view of the impairment of the trade mark's function of origin is generally excluded if the advertisement - as in the case in dispute - appears in an advertising block clearly separated from the hit list and marked accordingly and itself contains neither the trade mark nor any other reference to the trade mark owner or the products offered under the trade mark. The BGH clarified that this also applies if the advertisement does not indicate the absence of an economic connection between the advertiser and the trade mark proprietor and that the mere fact that products of the kind offered under the trade mark are designated in the advertisement with generic terms (in the dispute "chocolates" etc.) does not lead to an impairment of the trade mark's function of origin. According to the BGH, this assessment is in line with the case law of the ECJ (most recently ECJ, judgment of 22 September 2011 - C-323/09, GRUR 2011, 1124 - Interflora/M&S Interflora Inc.). Accordingly, it is for the national court to examine the question of impairment of the function of origin on the basis of the standards developed by the Court of Justice, taking into account all factors it deems relevant. Therefore, the BGH did not consider a referral to the ECJ necessary, also in view of the case law of the Austrian Supreme Court (GRUR Int. 2011, 173, 175 - BergSpechte II) and the French Cour de cassation (GRUR Int. 2011, 625 - CNRRH), which reached different results when assessing Adwords ads, taking into account the factors they considered relevant.
Judgment of the BGH of 13 December 2012 - I ZR 217/10 - MOST chocolates
Lower courts:
Regional Court of Braunschweig - Judgment of 27 August 2008 - 9 O 1263/07
OLG Braunschweig - Judgment of 24 November 2010 - 2 U 113/08, GRUR-RR 2011, 91
Source: Press release of the BGH
Goldberg Attorneys at Law
Attorney at Law Michael Ullrich, LL.M. (Information Law)
Specialist lawyer for information technology law
E-mail: info@goldberg.de
