Posts Tagged 'BGH'

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

20121215_BGH_logo_teaserIn 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/SchubertJournal of Intellectual Property Law and Practice, 2011, Vol. 9, No. 9, 602.

20121215_Most-Pralinen_AD

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

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*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:

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

*New BGH meta tag decision “Partnerprogramm”

Screen shot 2009-11-02 at 11.20.33I’ve just discovered on  IPKat blog a new decision by the  BGH [BGH, Urteil vom 07.10.2009 – Az. I ZR 109/06] on the topic of meta tagging or other SEO methods and the liability of advertiser. This is thus NOT and keyword advertising case.

In the Partnerprogramm case the TM (“ROSE”) of a claimant (www.roseversand.de) was found to be used by an web-advertising company 0049-net GmbH which got hired by the defendant (www.raddiscount.de) , a  competitor of Rose, to promote the defendants website.  The core problem of the case does not lie in the trademark use issue but on the liability of the defendant for the trade mark infringement by the advertising website. The courts have had no troubles to find an infringement as the TM of the claimant got used in the search results of the advertising company which then directed possible customers to the website of the defendant and thus the courts for an confusion of origin.

The BGH states that:

1. Wird ein als Suchwort verwendetes – geschütztes – Zeichen dazu verwendet, das Ergebnis des Auswahlverfahrens in der Trefferliste einer Internetsuchmaschine zu beeinflussen und den Nutzer auf diese Weise zu einer Internetseite des Verwenders zu führen, liegt eine markenmäßige Benutzung vor. (vgl. BGH, Urteil vom 18.05.2006 – Az. I ZR 183/03, MIR 2006, Dok. 196 – Impuls; BGH, Urteil vom 08.02.2007 – Az. I ZR 77/04, MIR 2007, Dok. 287 – AIDOL; BGH, Urteil vom 22.01.2009 – Az. I ZR 30/07, MIR 2009, Dok. 063 – Beta Layout; BGH, Beschluss vom 22.01.2009 – Az. I ZR 125/07, MIR 2009, Dok. 050 – Bananabay).

[translation by Austrotrabant] If a protected sign [trade mark] ]is used as search term [keyword] to influence the decision-process [?ranking procedure?] on the search result page of a internet search engines and thus guides the user to the website of the person using the advertising service [advertiser], this constitutes trademark use.

I am of the opinion that the IPKat blog somehow got this decision wrong when they  labelled it as “Liability for AdWords” but I agree with Uli Hildebrandt when he states that:

The BGH clarifies an issue concerning liability for links. A company that pays commission to another company which has a link to the first company’s offers and infringes a trade mark with this concrete link is itself liable for the link.

*OLG Braunschweig aligns to BGH’s “pcb” on “Broad Match”

As I’ve already stated earlier the decision of the OLG Braunschweig always used to be very “different” when it came to the issue of broad matching. In a decision issued on the 25th of March 2009 (Az. 2 U 193/08) the OLG now dropped its line of argumentation which had placed a duty onto advertisers, who used AdWord’s “broad match” keyword-option, to check if any of his competitor’s trademark were displayed in the “additional keywords”-section of the Adword’s Keyword Tool(!). If the advertiser could prove that this has not been the case he could only be sued for interim injunction in case he refused to add his competitor’s TM to his list of exclusive keywords.

Following the BGH’s “pcb”-decision the OLG now stated that advertisements triggered by a term similar to the a competitor’s trademark (broad match) does not necessarily constitute a “attribuatable use” of the competitor’s trademark under  § 14 (2) of the German MarkenG.


Links:
Ott, Links and Law [ger]
Dr. Damm & Partner [ger]
Markenserviceblog [ger]

*Graphic summary of the BGH-decisions -update-

20090430_chile-presentation_final_key037

Please click on the image to enlarge!

*Posterlounge Case

1. OVERVIEW & COMPARISON TO PREVIOUS CASES:
The decision at hand [LG München, 10.04.2008, 1 HK O 5500/08POSTERLOUNGE] 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.

Presumably as a consequence of this decision, Google Adwords added Great Britain and Ireland on the 5 April 2008 to their list of countries with a weakened trademark-protection.

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”.

2.1. DECISION:
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.

-Confusion-
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).

-Trick-
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.

3.SUMMARY:
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.


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