BGH: MOST-Pralinen; German Supreme Court remains liberal on Keyword Advertising & contradicts Austrian and French Supreme Courts

In a press release, the German Supreme Court (BGH, 13.12.2012, I ZR 217/10, MOST-Pralinen) stated that the booking of a generic term (“pralinen”) as a keyword on Google AdWords whilst using the “broad match” function, does not constitute a trademark infringement, when users, entering a query (“Most pralinen”) similar to the trademark  of a competitor (“MOST”) as a search term, are shown ads for other companies than the one of the trade mark owner, although (1) the text of the (side-)ad does not explicitly rule out any possible commercial connection between the TM-holder and the competitor and (2) when booking the keyword “pralinen” on Google AdWords the term “MOST Pralinen” was suggested as a “Keyword Idea” by the Google AdWords Keyword Tool.

For a detailed summary of this case please see my previous post and an article by Clark/Schubert, Journal of Intellectual Property Law and Practice, 2011, Vol. 9, No. 9, 602.

What makes the press release however truly interesting is that the court not only (re-)affirmed its (Bananabay II) interpretation of the ECJs Google France decision 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 but also openly contradicted the Austrian OGH (“Bergspechte II“) and the French Cour de cassation (“Eurochallenges”), stating that there was no need for a reference for a preliminary ruling by the ECJ.

A more detailed analysis will follow, once the BGH has published the full text of its decision. It remains open whether this decision will influence the High Court of England and Wales in its -still outstanding- decision in “Interflora“.

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When preparing this post the author entered the keyword “pralinen” into the  Keyword tool, which suggested, amongst many generic variations, “Keyword ideas” such as “dr oetker pralinen”, “lindt pralinen”, “milka pralinen” and “most pralinen” (please see below). It is interesting to see that the Keyword Tool obviously is quite confident that the German BGH will also in the future stick to its interpretation 😉

At the bottom of the Keyword tool there is however a notice: “[…] We reserve the right to disapprove any keywords that you add. You are responsible for the keywords that you select and for ensuring that your use of the keywords does not violate any applicable laws. […]”.

There is no indication in the text of the lower court (OLG Braunschweig, 24.11.2012, 2 U 113/08, MOST-Pralinen) that a “dynamic keyword insertion” has been used. However, it is interesting that although “pralinen” was entered as a search term, the term “pralinen” in the ad-text was not written in bold letters.