Posts Tagged 'OLG Braunschweig'

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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*First German Post-Google-France Ruling: OLG Braunschweig Compares Google To A Shop-Assistant And Once Again Finds A Trademark Infringement

The OLG Braunschweig is well know among German lawyers for being very trademark-owner friendly and the ECJ’s Google France ruling obviously hasn’t changed much about this. In a recent decision the court found, dissenting from the former BGH PCB-ruling, that users when entering a trademark as query and subsequently being displayed an ad assume that there has to be “some kind of economical connection” between the search term entered and the displayed ads. Continue reading ‘*First German Post-Google-France Ruling: OLG Braunschweig Compares Google To A Shop-Assistant And Once Again Finds A Trademark Infringement’

*German Court Surprisingly Liberal on Derogatory Domains & Likeliness of Confusion Online: www.bund-der-verunsicherten.de

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.

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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 domainhttp://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.

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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.

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Analysis:

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.

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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.

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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.

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Conclusion:

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.

*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]

*OLG Braunschweig: Obligation to check for additional keywords when using “broad match”

Image you book a keyword, e.g. “x” using the “broad match” option in Google Adwords. Now you are curious, or maybe just afraid of your competitors’ attorneys, and thus you would like to know which user queries will trigger your ad. As you don’t want to get into trouble you would be willing to “exclude” all of your known competitor’s trademarks. The AdWords Help Files aren’t really of much help to you on that issue and just tell you that:

With broad match, the Google AdWords system automatically runs your ads on relevant variations of your keywords, even if these terms aren’t in your keyword lists. Keyword variations can include synonyms, singular/plural forms, relevant variants of your keywords, and phrases containing your keywords.

So the next reasonable thing for you will be to check the Keyword-Tool as the description of the tool says that the keyword tool may be used to

–    find and add new keywords to your ad groups
–    refine your keyword list
–    find negative keywords, and
–    see additional keywords that can also trigger your ads (expanded matches)

When googling the term „expanded matches“ on is led to a site which states that:

With expanded broad matching, your ads automatically appear on additional terms we’ve matched to your keywords, so check out your potential matches. If you don’t want to appear on these terms, you’ll need to edit your keyword list and/or change your keyword matching options. […] Google analyzes millions of searches every day, and we use that data to find you matches you might not think of on your own.

The hyperlink in the text didn’t work but when goggling the link I was led back to AdWords External Keyword Tool.


So summarizing my last two hours of surfing around on AdWord’s help sites… an advertiser using the “broad match” function may check out the Keyword Tool to see which additional- /expanded- keywords or variations of his keyword can trigger his ads but there is no way for him to get certainty. If the advertiser wants to make sure his ads will not be triggered by a competitor’s trademark (assuming they are both offering similar goods or services and no justifications as e.g. descriptive use etc. given) he would thus have to enter all of his competitors’ trademarks as negative matches.

The OLG Braunschweig has repeatedly ruled (e.g. OLG Braunschweig, 11.12.2006, 2 W 177/06 JETTE)  that advertisers are under the obligation to check the additional keywords offered by AdWord’s Keyword Tool (the German court unfortunately only speaks about the list [“die Liste”]) to see if any of its competitors’ trademarks are listed there as additional keywords. If the advertiser sees a third party trademark in the list he will then have to book it as an negative keyword. If he fails to do so, he neglect his reasonable duty to check [“zumutbare Prüfpflichten”] and thus infringes –according to the OLG Braunschweig- the trademark of its competitor. If the advertiser had checked when booking the keyword and had not found any trademarks in this list, an injunctive relief [Unterlassungsanspruch]as well as subsequent costs can only be issued against him after the proprietor of the infringed trademark has informed the advertiser about the fact that his ad is triggered by the trademark (notice and take down).

What is now interesting to see is on the one hand side that the advertiser is only under the duty to check right at the time when he books the keyword and on the other side that the use of the Keyword-Tool and the subsequent check is currently obligatory in Germany. A practical solution?


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