Permissibility of the use of third-party marks as AdWords remains unclear

In January 2009, the Federal Court of Justice (BGH) had to decide on three proceedings concerning Google AdWords, in which the question at issue was the trademark law permissibility of the use of third-party marks or brands as keywords for keyword-related advertising (keyword advertising). Lawyers and advertisers had long awaited a decision and were, however, (initially) disappointed.

It has not only been the case since Google AdWords and other comparable programs have existed that it is extremely useful for thecompetitionof a company to be mentioned in connection with the (well-known) marks of competitors. It is therefore natural to make use of the available opportunities and to couple the display of Google advertising not least to the marks (brands, company names, etc.) of other companies. After all, you will also be found that way if someone searches for the competitor. The competitor, for its part, finds this less appealing, which is why there have been a whole series of court proceedings with very different outcomes in the past. Three of these have now made their way to Karlsruhe. However, anyone who expected a clear clarification from there has been disappointed.

Two of the proceedings were decided in favour of the defendants. In the first (Az. I ZR 139/07), the matter concerned the descriptive use of a sign (PCB), which was at the same time protected as a mark for the plaintiff (PCB-POOL). The dismissal of the claim is not surprising, since even on the basis of a registered mark, no one can be prohibited from using it or a part of it in a descriptive manner, provided that the component has a particular descriptive meaning (§ 23 MarkenG). In the second proceeding (Az. I ZR 30/07), not a mark but the company name of a competitor was used as an AdWord. The dismissal due to lack of likelihood of confusion was justified on the grounds that a searcher would not necessarily assume that all displayed advertisements originate from the name bearer, unless such is misrepresented or a usurpation of the name is present. Such free-riding is therefore also permissible in the future under certain circumstances. Both judgments were by no means surprising and do not even address the crucial question.

One had hoped for an answer to this from the third claim (Az. I ZR 125/07), which concerned the use of a mark (Bananabay) – not descriptive in this case. The BGH arrives at the following conclusion:"If a designation used as a keyword – as in this case – is identical to a third-party mark and is furthermore used for goods and services identical to those for which the third-party mark enjoys protection, the assumption of a mark infringement in such a case depends only on whether the use of the protected designation as a keyword constitutes a use as a mark within the meaning of the Trade Mark Act."

This statement brings the use of third-party marks asAdWordvery close to the area of mark infringement. With regard to the question of whether such a use of a mark is also a "trade-mark use", the court was, however, unwilling to commit itself without first consulting the Court of Justice of the European Union (EuGH) in Luxembourg. Without such a "trade-mark use", a mark infringement is excluded according to the general view.

For context: The unwritten requirement of use as a mark concerns the manner of use of the third-party mark. Use is "trade-mark use" when themarkserves to distinguish, in terms of origin, certain (identical or similar) goods and services. There is therefore already no mark infringement if this requirement is not fulfilled, for example because it is merely a mention of the mark to announce original goods or purely descriptive use (in this case § 23 MarkenG may also be applicable).

It remains to be seen how the EuGH will express itself on this point.