After all? Trade mark infringement through keyword advertising

A commonly held view is that the use of third-party trade marks as keywords for advertisements, e.g. within the scope of Google Adwords, is always and unconditionally permissible. That the higher court decisions supporting this view should be treated with caution is shown by the Higher Regional Court (OLG) Hamburg in a recent judgment, according to which brand bidding or keyword advertising in certain cases does indeed constitute a trade mark infringement and is unlawful.

The provider of a dating service advertised the following advertisements on Google and used "Parship", that is, the protected trade mark of a well-known competitor as a keyword, but not in the advertisement text itself:

Advertisement 1:

"Partnership Partner Search
The dating portal for discerning
singles: Register here & fall in love!
www.partnersuche.de"

Advertisement 2:

"Partnersuche.de free of charge
Germany's well-known partner search.
The partner search with class!
www.partnersuche.de"

As a rule, a trade mark infringement through the use of a third-party trade mark as a mere keyword is excluded if the advertisement is clearly recognisable as such and spatially separated from any search results and the advertisement text does not contain the trade mark. The proprietor of the trade mark "PARSHIP" nonetheless considered his rights to be infringed by the keyword advertising and sued the advertising competitor for an injunction.

The court's decision

The Higher Regional Court (OLG) Hamburg condemned the competitor by judgment of 22.01.2015 (Az. 5 U 271/11) accordingly. In the court's view, the use of a third-party trade mark as a keyword for the display of a advertisement constitutes a trade mark infringement if the advertising text and the link provided are so vague that the user cannot ascertain whether the trade mark proprietor himself or an independent third party is responsible for it. Since only generic, i.e. descriptive terminology was used in both advertisements, there was a lack of recognisability, as a result of which the origin function of the trade mark used as a keyword was impaired. In this case, the keyword advertising was infringing the trade mark. With regard to the first advertisement, a trade mark infringement also results directly from the use of the term "PARTNERSHIP" which is confusingly similar to the sign "PARSHIP", so that here the considerations regarding the recognisability of the authorship of the advertising message are not decisive.

Conclusion

The Higher Regional Court (OLG) Hamburg bases its decision exclusively on the interpretation of European Union law provisions by the Court of Justice of the European Union (EuGH) and thereby departs from – and does not further consider – the case law of the Federal Court of Justice (BGH). According to the latter, a trade mark infringement is namely excluded as soon as the advertisement displayed in the context of keyword advertising is marked as such and separated, and the third-party trade mark is not used in the advertisement text itself. Whereas the BGH considers it sufficient that no active connection is established with the trade mark proprietor, the Higher Regional Court (OLG) Hamburg requires that users be informed. However, the court fails to provide an explanation as to how this is to be done. The appeal was not allowed despite the apparently fundamental significance of the matter.