Use of third-party mark in description of an internet auction

Commercial activity exists in every independent activity pursued for economic purposes which does not constitute purely private, official or internal business conduct. An auction constitutes a trade mark infringement if it cannot be discerned from the design of the offer otherwise that the use of the trade mark is not intended to serve as an indication of the origin of the goods offered.

The defendant, as a user of the internet auction house eBay, repeatedly auctioned pieces of jewellery and advertised them, amongst other things, with the term 'Cartier'. She was therefore sued by the claimant, who is the proprietor of the International Mark (IR Mark) 'Cartier', for an injunction.

The court's decision

The court had to clarify in advance the question of whether the defendant acted at all in commercial transactions, i.e. in a commercial capacity, as this is a mandatory prerequisite for trade mark infringement claims. According to the view of the Higher Regional Court (OLG) Frankfurt a.M. (judgment of 08.09.2005 – 6 U 252/04), however, every economically oriented activity which is carried out independently and does not serve purely private or internal business purposes is sufficient. The activity, on the other hand, does not need to be directed at a purpose of acquiring property, nor need it be pursued with the intention of making profit. According to this reasoning, the court already considers the frequent appearance of an offeror as an auctioneer on an internet trading platform to be sufficient as an indication.

Although a purely private offer may still be possible in the course of otherwise commercial trading activity, this must, however, be made sufficiently clear. For this purpose, in particular the clear designation as a private sale in the auction description is to be considered.

Since the search for the term 'Cartier' resulted in the jewellery offers of the defendant also being listed in the search results, there is furthermore an origin-indicating use of the third-party mark, as the basic possibility that the offered items originate from Cartier could lead to corresponding confusion. According to the court's view, the opposite could not be inferred from the auctions in title and description, so that consequently a trade mark infringement and thus the existence of an injunction claim had to be assumed.

It is noteworthy that the court upheld the question of trade mark infringement or trade mark use even independently of the fact that the term 'Cartier' was used only in a completely unconnected sequence of advertising-effective terms. The average careful user does not, in fact, perceive these terms (directly), but rather, on the basis of his search request ('Cartier'), readily assumes that all auctions found are related to the search term.

Conclusion

The facts underlying this decision are basically comparable to the case law on the use of third-party marks in metatags. Here too, a trade mark infringement is assumed.

However, the clarification to the user that his search term (here 'Cartier') should not be understood as an indication of the origin of the goods offered in the context of the specific offer does not necessarily have to take place already in the list view on the search results page. This can also be done subsequently in the auction description itself by means of an unambiguous clarification.