Trade Mark Infringement via Google AdWords Advertisement?

The matter of the use of trade mark-protected keywords in Google AdWords was once again the subject of a higher court decision. The Court of Justice of the European Union (EuGH) ruled in its Louis Vuitton judgment (Az. C‑236/08 bis C‑238/08) that the use of third-party trade marks as keywords is permissible if it is apparent that the Google advertisement obviously does not originate from the trade mark proprietor. However, the EuGH left the assessment of individual cases expressly to the national courts.

A licensee of a trade mark sued the operator of an online shop for gift items and pralines following a prior out-of-court cease-and-desist letter and preliminary injunction proceedings (LG Braunschweig, Az. 9 O 310/07) for infringement of trade mark rights in the word/figurative mark "M…" registered in class 30 by means of a Google AdWords advertisement. The licensee objected to the fact that when the search term "M…Pralinen" was entered in Google, the defendant's advertisement appeared on the right side of the search results as follows:

Pralinen
Weine, Pralinen, Feinkost, Präsente
Genießen und schenken!
www.f…geschenke.de

By clicking on the link in the advertisement, one reached the shop of the defendant. However, products of the disputed trade mark "M…" were not distributed there.

The shop operator objected that he had not entered the disputed keyword himself. That his AdWords advertisement also appeared when the search term "M…Pralinen" was entered was due to the Google function "Broad Match" and therefore could not be attributed to the shop operator.

Decision of the Court

The Higher Regional Court of Braunschweig (OLG Braunschweig) decided by judgment of 24.11.2010 – Az. 2 U 113/08 that a trade mark infringement exists despite the case law of the EuGH if AdWords advertisements are activated with the option "Broad Match" and the advertisement thereby appears next to the search results of a third-party trade mark.

It follows from the decisions of the EuGH that the use of third-party trade marks as keywords is permissible if no likelihood of confusion exists. In the present case, however, the Internet user expects that after entering the search term "M…" he will also receive an offer of products of that search term. The Higher Regional Court of Braunschweig even assumes that the Internet user expects an economic connection between the trade mark proprietor and the person advertising via AdWords, even if this is merely of a distributive nature.

According to the opinion of the OLG, it is irrelevant that the online shop operator did not know the scope of the function "Broad Match". The operator had the opportunity to have Google advise him in this regard.

Conclusion

In our assessment, the OLG Braunschweig does not comply with the decision prescribed by the EuGH. In the present case, the alleged infringer neither entered the trade mark-protected keyword itself nor used it in its AdWords advertisement. This should not be sufficient to establish a likelihood of confusion. It remains to be seen whether this decision will be upheld by the BGH.

In light of this judgment, we consider it problematic in the meantime to use the Google AdWords function "Broad Match". At least one should seek legal advice beforehand in individual cases.