The OLG Braunschweig, which used to be known for its TM-holder-friendly attitude, has recently delivered a very surprising liberal decision concerning the likelihood of confusion online in relation to a criticising website. Special thanks to Stephan Ott, the author of Links&Law, for pointing out this decision to me.
In its Bund-Der-Verunsicherten decision the OLG Braunschweig 10.11.2009, Az. 2 U 191/09 had to decide whether the rights of the plaintiff, the “Bund der Versichterten e.V.” (roughly translated: “Association of Insured”), were infringed by the criticising website “www.bund-der-verunsicherten.de“:
a: through the registration/use of the domain “http://www.bund-der-verunsicherten.de” (“-” marks had been inserted and the prefix “un” had been inserted into the word “Versicherten“, which however changed the meaning. “Verunsichert” could be roughly translated as “Association of the Scared“) and
b: through the use of the term “Bund der Versichteren” (there is just the “e.V.” missing) as the title of its Adwords as well as
c: through the use of the term “Bund der Versicherten” (there is again just the “e. V.” missing) as a keyword to trigger AdWords.
The defendant used to belong to the association of the plaintiff, but at some pointed started publishing content on websites which reported about the activities of the plaintiff’s association in a critical way.
ad a: Concerning the registration/use of the domain, the court found that the meaning of the term (“Verunsicherte” instead of “Versicherte“) was so different from the original term that there was no likelihood of confusion.
Furthermore, the plaintiff did not enjoy trademark protection for the name of his legal entity, as the name was just a combination of words which was not protected itself. The plaintiff has also not used the (alleged) TM in the course of trade.
In addition, the court found that the defendant has not committed an act of name arrogance (Namensanmaßung according to §12 BGB), but only made use of his right of freedom of speech according to Art 5 (1) GG.
Even if the prerequisites for protection as a trademark or for name arrogance had been fulfilled, the court found that there was nevertheless no likelihood of confusion.
ad b: Concerning the use of the term in the title of its ads, the court found that the description of the ad (=other elements of the AdWord; Display URL & two lines of 35 letters each) was sufficient to rule out the likelihood of confusion. Especially the Display URL [which seems to be a different URL then the URL mentioned in a) on the bottom of the ad, pointing to “http://www.bundderverunsicherten.de” was found clear enough to rule out any confusion with the domain “www.bundderversicherten.de” [???].
The court finally pointed out that the plaintiff had no other way of describing the content of its website and that the use of the name was thus in accordance with §23 (2) MarkenG, which allows descriptive use.
ad c: Concerning the use of the term as a Keyword to trigger AdWords on Google, the court in this case ruled out the possible likelihood of confusion by stating that users are aware of the fact that not all hits shown are related to the query searched for and thus read the descriptions of the hit before following a link/navigating to a website. Otherwise, the court pointed out, users would have to check every one of the 19.000 hits displayed.
The court however referred to its prior decisions, upholding, despite the BGH recent decisions and the pending references at the ECJ, that the use of a TM to trigger AdWords does constitute trademark use. In this case however, the use of the name would have been covered by the exemption of descriptive use in § 23 (1) MarkenG.
This case strongly reminds me of the Austrian decision “Aquapol-Unzufriedene.at“, where the Austrian court issued a similar ruling, based on similar grounds, concerning however the registration of a domain name. In the Austrian decision the differing element was the addition of the perfectly visible term “-Unzufriedene” at the end of the second level domain. In an earlier German case the LG Düsseldorf 30.01.2002, 2a O 245/01 “scheiss-t-online” had decided against the registrar of a domain who had published only critical contend about a German company under the domain “scheiss-t-online”.
In the German case at hand the court found instead that the insertion of the “-” and the term “un” was sufficient to rule out likelihood of confusion not only in relation to the domain name, but also, together with the argument of descriptive use, in relation to the use of the criticizing term as a keyword and as the title of the AdWord, actually leading to the criticising website.