Descriptive internet link is not trademark infringement

The use of another party's trademark or identifier for the purposes of setting an internet link does not constitute trademark infringement if the sign does not serve as an indication of origin and does not relate to the user's own products, but is merely used to designate other parties' original products (trademark designation). The publication of content on the internet obliges the content provider to tolerate links to that offering. This internet-specific procedure must in any case be accepted as lawful within the usual scope.

The applicant (Ast.) is the proprietor of a trademark "MMM" registered for the provision of advice and intermediation in respect of private health insurance. Furthermore, he promotes his offering, inter alia, under the domain "www.BBB.de", which contains his civil name. The internet offering accessible thereunder contains predominantly commercially oriented information and comparison compilations which are categorised according to general headings. The Ast. is to be regarded as an intermediary for private health insurance.

The respondent (Ag.) – a partnership of persons under civil law (GbR) – maintains under "www.GBR.de" a thematic link directory, which contains, among other things, the category "PKV-Wechsel". The links maintained thereunder are in part sponsored; there is a search function within the individual categories.

A search on Google for the trademark "MMM" of the Ast. produced at position 1 of the search results a link directly to the offering of the Ast., and at position 23 a link to the Ag. This led directly to a search results page within the "PKV-Wechsel" category. Thereunder were found, in addition to so-called "sponsored links" and other references to competitors of the Ast., also a link to the pages of the Ast. itself. Furthermore, the search form field was already automatically pre-filled with the trademark of the Ast., which was technically accomplished by reading out the original Google search query from the referrer.

The Ast. sees his trademark rights thereby infringed and regards the conduct of the Ag., moreover, as unfair competition.

The decision of the court

The Regional Court (LG) Düsseldorf rightly proceeds in its judgment of 17.10.2005 (Az. 34 O 51/05) on the basis that the page design of the Ag. does not infringe the trademark of the Ast. pursuant to § 14 II no. 2, IV MarkenG, since the sign was not used by the Ag. in any of the use types indicated and a likelihood of confusion for the target audience addressed did not exist.

Although the Ag. maintains a similar offering to that of the Ast. and uses in the links referring to it a sign identical to its trademark, which in principle would be sufficient for a likelihood of confusion, trademark infringement presupposes that the trademark as such is used, that is to say for the purpose of distinguishing goods and services of different undertakings. This prerequisite is precisely not present in the mere use for the designation of other parties' original products – as in the case here of those of the Ast. In this respect, there is no difference to an entry in a reference work.

Particular circumstances such as misleading or reputation exploitation, which could nevertheless constitute trademark infringement, are not present, since the offering is reproduced in full, the filters used (sponsored links / top links / other links) are disclosed, and the reference to the Ast. is contained in the upper third of the page.

The same applies to the repetition of the trademark in the search form of the Ag. In this regard as well, the lack of a trademark-specific use follows from the merely informational effect.

An infringement of competition law pursuant to § 3 UWG (general clause) by the Ag. would presuppose that its conduct is to be regarded as unfair competition on the basis of particular circumstances.

The offering of the Ag. is, however, within the scope of what is customary on the internet in the context of search results. The insertion of links as references to another offering is an essential characteristic of the internet and as such not unfair. Conversely, it is reasonable to expect of one who maintains an offering on the internet to accept such linking within the usual and generally practised scope. In this respect, he declares his consent, so to speak, implicitly.