*BGH: Clear Win For Google AdWords in German Eis.de / Bananabay II Case

The German Federal High Court on Civil matter (BGH) ruled in early January that the booking of a sign identical to a trademark to trigger ads for similar products or services does not infringe TM law as long as the text of the ad does not contain the TM and the Display-URL points to a third-party website.

Today the full text of the decision got published (BGH, 13.01. 2011, Az.: I ZR 125/07).

The court not only ruled on the trademark aspects but also used the occasion to state expressively that AdWords and “MetaTags” have to be treated differently and that Keyword Advertising does notconstitute an act of unfair competition.

The decision  constitutes a significant victory for Google AdWords and its customers in Germany. Although the author does not fully understand what the court was trying to say in para 27, the decision is of surprisingly clear and also brings long-desired clarity to other legal questions related to keyword advertising.

As the author is painstakingly trying to finish a paper on L’Oreal on time here are just a few highlights:

Para 19: The plaintiff used a sign identical to a TM for identical goods and services.

Para 20: There is a use “for goods and services”.

Para 21: The sign however is not getting used “as a trademark” as the use doesn’t have an adverse effect upon the functions of the trademark.

Para 22 ss: The function of origin is not affected as the ads are clearly labelled and separated.

Para 26: No reasonable internet user would assume an economical connection.

Para 27: The is no connection between the search term and the ad which could infringe the function of indicating origin as  … the search term remains visible in the query box when the ad is being displayed: The court in this respect refers to its PCB decision (BGH 22.01.2009, I ZR 139/07, pcb) where the court in para 23 states users won’t assume a use of the search term by Google as the term in the search query box stays the same the user had previously entered him/herself.

27 “…  Eine Verbindung zwischen dem Suchwort und der Anzeige in der Weise, dass das mit dem Suchwort übereinstimmende Zeichen auf die Herkunft der in der Anzeige beworbenen Produkte oder auf wirtschaftli-che Verbindungen der Unternehmen hinweisen könnte, stellt der Internetnutzer auch nicht deshalb her, weil beim Erscheinen der Werbung der Suchbegriff in der Suchzeile sichtbar bleibt. .. .”

Para 28: Keyword Ads shall be treated differently than Meta-Tags.

Para 28: Users are familiar with commercial information in press and broadcasting media and are aware of the way search engines finance themselves. Users are however NOT aware how keyword advertising works. Users however who DO know how keyword advertising works are at the same time aware that anyone can book a keyword and thus assume no economical connection etc.

Para 29: The Advertising function also isn’t adversely affected.

Para 30: Keyword Advertising does not violate the German Law on Unfair Competition.

Para 30 s: No passing-off.

Para 31: No unfair impairment of competitors.

Para 36: No misleading commercial practice.


PS: Maybe also the Austrian OGH might rethink his heavily disputed rulings on this matter in the light of this decision.

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