Use of third-party mark as keyword in Google AdWords advertisements

A trade mark infringement presupposes that the third-party sign is disclosed to the general public. This is precisely not the case with mere keyword targeting in the context of Google AdWords advertisements.

The defendant uses the Internet search engine Google within the framework of the AdWords advertisements (sponsored links) offered there for the printing products it offers at www.posterXXL.com. It uses the keyword / AdWord 'Plakat 24 Stunden Lieferung' for this purpose, which means that its advertisement is displayed as a sponsored link alongside the free search results when searching for this word combination or parts thereof.

The plaintiff also offers printing products and is the proprietor of the word/figurative mark 'Plakat 24' in this respect. It seeks an injunction against the use of the aforementioned AdWord on the grounds of trade mark infringement.

The court's decision

The court is of the opinion that there is no trade mark infringement (Regional Court (LG) Leipzig, judgment of 08.02.2005 – 5 O 146/05).

Correctly, the mark 'Plakat 24' for printing products, also in combination with the element 24 as an indication of an online shop or 24-hour delivery, has predominantly descriptive significance and thus only weak distinctiveness. Furthermore, a trade mark infringement strictly presupposes that the use of the mark in business traffic, i.e. in public, takes place, which in the case of AdWords – provided that the sign is not also used in the advertisement – is precisely not the case.

The court further relies on a function comparable to metatags as a pure search term, which alone allows the conclusion that the respective word appears on the page, but not that this page originates from the mark proprietor. It is equally conceivable that the offering – in the case of goods – is attributable to a reseller or – for example in comparative advertising – also to a competitor. The same ultimately applies to advertising advertisements in Google AdWords. However, WRP 2004, 180 (Higher Regional Court (OLG) Karlsruhe) and WRP 2000, 775 / MMR 2000, 546 (Higher Regional Court (OLG) Munich) do deviate from this. However, the Regional Court (LG) Leipzig considers this case law to be obviously incorrect or at least outdated.

The grave (phonetic) differences between 'Plakat 24 Stunden Lieferung' and the mark 'Plakat 24' further demonstrate, in the court's view, the absence of a trade mark infringement.

The court also sees no violation of competition law from the perspective of hindering a competitor, since the use of the mark undertaken by the defendant is to be understood in general parlance as advertising of printing goods delivered within 24 hours. It is therefore a legitimate use of the term as a generic designation.

The appeal of the plaintiff to the Higher Regional Court (OLG) Dresden was unsuccessful (Higher Regional Court (OLG) Dresden, judgment of 30.08.2005, 14 U 498/05).

Conclusion

The judgment must be treated with caution. On the one hand, there are some judgments – albeit in different factual scenarios – that reach the opposite conclusion. Moreover, the mark 'Plakat 24' is indeed endowed with only weak scope of protection and is not very well-known.

Furthermore, the mark was not adopted 1:1, but was only fully degraded to a purely descriptive term through the addition of '... hour delivery'.

Nevertheless, the decision must be regarded as correct. However, this does not mean that the use of third-party marks as AdWords would be permissible across the board.