1. OVERVIEW & COMPARISON TO PREVIOUS CASES:
The decision at hand [LG München, 10.04.2008, 1 HK O 5500/08 – POSTERLOUNGE] is quite similar to the “Mr Spicy” judgement [Victor Andrew Wilson v. Yahoo! UK Ltd. / Overture Services Ltd. (2008)] issued in the UK last February and the “PCB-Pool” decision of the German Supreme Court [BGH, 22.01.2009, I ZR 139/07 – PCB].
In the Mr. Spicy case, the holder of the Community trademark “Mr. Spicy” sued Yahoo! for trademark infringement, as Yahoo! showed advertisements for an competitor, which got triggered by users entering the search term „spicy“. In fact, the competitor had booked the keyword “spicy” using Yahoo!’s “Advanced Match”-option (may be compared to Google Adword’s “Broad Match” -option). The High Court then found that the trademark “in this case [was] not used by anyone other than the browser who enters the phrase “Mr Spicy” as a search query in the defendants’ search engine”. Thus, Yahoo! was not found liable.
For more information please refer to Dr. Ott’s links&law webpage , which offers a very good overview over any recent internet law cases.
In the PCB-Pool decision of the BGH the facts where similar, as the defendant booked a term which is widely known as an abbreviation for a technical process (“pcb” standing for “printed circuit board“), using the Google Adword’s “Broad Match“-option. This led to the display of the defendant’s advertisement when entering the trademark of the claimant (“PCB Pool”). The claimant’s advertisement did not bear the trademark of the claimant (“Adv-“).
The BGH found, similar to the UK High Court, that neither the defendant nor Google had “used” [“Verwendung” in the original German, which implies use in the broad sense of the word] the claimant’s trademark. Instead, they had only used the generic term “pcb“. Thus, the question of whether the defendant’s use [“markenmaessige Nutzung“, meaning use in the narrow sense] violated the claimant’s trademark rights wasn’t examined at all. Furthermore, the BGH pointed out that the trademark of the claimant was very “weak” and that the use of the trademark by the defendant might have been privileged anyway in light of § 23 (2) MarkenG (descriptive use).
2. FACTS OF THE CASE:
In the decision at hand the court declined a preliminary injunction against a competitor of the trademark owner who had booked two (generic) words, which combined together in the right order resulted in the claimant’s trademark. The defendants used the “broad match” option and thus the adverts, which did not bear the protected sign (Adv-), where shown as a Side-Ad when users entered the protected term as a search query into Google. After being informed by the claimant, the defendant instantly added the trademark of the claimant to its list of “exclusive Keywords”.
The court found that the defendants had not booked the protected sign as a keyword to trigger the advertisement and thus had not used the trademark (“keine Nutzung” = no use in the narrow meaning), but instead booked two generic terms which lead, because of the broad match option, to the display of the competitor’s ads.
The court further assumed that the trademark [“POSTERLOUNGE”] was not likely to be confused with the term [“lounge poster”] used by the defendants and that the trademark’s distinctiveness was very weak.
Furthermore, the court reasoned that the use by the defendant might have been privileged anyway by § 23 (2) MarkenG (descriptive use).
What is interesting to note is that the court expressly stated that the protection of such weak trademarks, which mainly consist of generic terms, might lead to the unwanted result of achieving protection through the “trick”(!) of just rearranging the order of generic terms. The court gave the example of “Kaufhaus” (this is a German word, consisting out of the two German words for “Kauf” = buying and “Haus”=house) and “(descriptive use) Haus-Kauf”.
-No indirect infringement-
The court also found that no indirect infringement (Störerhaftung; 1004 BGB) had take place and that the actions of the defendant did not amount to acts deemed to be unfair competition.
-No contradiction to earlier cases-
The court ended by stating that this ruling does not contradict previous judgements on similar matters (Kammer für Handelssachen LG München 9 HK O 5193/08, 17 HK O 4413/ OLG München 08, 29 U 4013/07), as the OLG judgement dealt with a case of almost identical signs and thus a high level of possible confusion, while the other two LG decisions were not based on such detailed (technical) explanations.
Summing up all the decisions discussed, it seems that courts have finally started to pay attention to the technical background of advertising in an online environment and therefore start to take into account technological and factual matters when applying trademark law to Keyword Advertising cases.