Google Ads (AdWords): No liability for lack of knowledge!

Is one liable for Google Ads (formerly Google Adwords) advertisements if one is unaware of the legal infringement? The Higher Regional Court of Frankfurt a. M. (OLG Frankfurt a. M.) had to decide whether the automatic generation of a keyword protected as a trade mark by Google in Google Ads could result in ancillary liability of the affected Ads customer.

An orthodontist was given notice of a cease-and-desist letter by a competitor. The dispute centred on the trade mark law permissibility of a Google Ads advertisement. When the competitor's trade mark was entered into Google, the search result of the orthodontist's offer, marked as "Advertisement", appeared.

It was undisputed that not the orthodontist had entered the competitor's trade mark as a keyword, but rather this had been generated automatically by Google and without the knowledge of the orthodontist.

The unsuccessful cease-and-desist procedure ultimately resulted in litigation before the Regional Court (LG Frankfurt a. M.) (Judgment of 30.10.2019, Az. 2-06 O 255/19), in which the competitor sued for a cease-and-desist order. However, the court did not grant the competitor's application. In its reasoning, it stated that the orthodontist was not responsible for the advertisement as a principal, since not the orthodontist himself, but rather Google had provided for the link between the competitor's trade mark (search term) and the orthodontist's advertisement.

No ancillary liability for Google Ads advertisement

The Higher Regional Court of Frankfurt a. M. (OLG Frankfurt a. M.) (Order of 19.03.2020, Az. 6 U 240/19 ) also saw no trade mark infringement in the advertisement. The orthodontist was liable neither as a principal (as the Regional Court had already established) nor as an ancillary party.

In the present constellation, ancillary liability of the orthodontist could only come into question from the point in time of knowledge of the fact that when the competitor's trade mark is entered as a search word, an advertisement for the orthodontist's offer is displayed.

Since the doctor was unaware of the automatic generation of the competitor's trade mark as an AdWord, ancillary liability was thus precluded.

General permissibility of Google Ads advertisements

Furthermore, the Higher Regional Court of Frankfurt a. M. (OLG Frankfurt a. M.) expressed itself on the permissibility of Google Ads advertisements. According to the case law of the Federal Court of Justice (BGH), the use of terms in Google Ads that are protected under the Trade Mark Act (MarkenG) is permissible insofar as the advertisements appear in an advertising block that is clearly separated from the list of results and appropriately marked as such. Furthermore, it is required that the advertisement contains neither the trade mark nor any other reference to the trade mark proprietor or the products offered under the trade mark.

However, the Federal Court of Justice (BGH) considers a trade mark infringement through keyword advertising to be present if, for a third party, due to the general notoriety of a distribution system of the trade mark proprietor, the presumption of an economic connection between the trade mark proprietor and the advertiser is obvious.

Conclusion

If Google automatically adds a word mark protected by trade mark law as an AdWord to the booked AdWord advertisement, the affected Google Ads customer is liable in the event of a trade mark infringement for its advertisement at the earliest from the point in time of knowledge of this as an ancillary party.