BGH decision on 'AdWords' expected for next week

'AdWords' have been a hot topic in Germany for a while. In the absence of a Federal Supreme Court (Bundesgerichtshof) decision, some German Higher Regional courts (e.g. Dresden, Braunschweig) have been treating 'AdWords' and metatags in an identical manner, assuming trade mark infringement, while other Higher Regional courts (e.g. Frankfurt) have ruled that using a competitor's trade mark as a keyword/'Adword' in an internet search engine would not amount to trade mark infringement if the search result was recognizable as an advertisement.

After several years of uncertainty, the German Federal Supreme Court (Bundesgerichtshof) has now announced - in its press release No. 10/2009 of 15 January 2009 - that its long awaited decisions in three 'AdWord' cases will be published on 22 January 2009.

The (Bundesgerichtshof) had already decided in its default judgment in Impuls (I ZR 183/03) of 2006, that the use of a third party's trade mark (or designation) in the course of business as a metatag can constitute infringing use of the trade mark (or designation). However, while Impuls settled the discussion whether the use of metatags can per se amount to trade mark infringement, it was still unclear whether Impuls should equally apply to other forms of trade mark-based contextual advertising on the internet, such as keyword or Google 'AdWord' advertising.

The BGH will issue judgments in the following three cases:

Case I ZR 125/07: The claimant and the defendant both sell adult entertainment products. The claimant is the proprietor of a trade mark registration for "bananabay" and sought to stop its competitor's use of the trade mark as an 'AdWord' on the competitor's website claiming trade mark infringement and seeking damages.

Case I ZR 139/07: The claimant and the defendant are again competitors. The claimant owns a trade mark registration for "PCB-POOL" and the defendant used the sign 'pcb' as an 'AdWord' on its website. The court of appeal, the Higher Regional Court of Stuttgart, agreed with the claimant and ruled that the use of a trade mark as an 'AdWord' constituted trade mark infringement.

Case I ZR 30/07 : The defendant used the claimant's company name "Beta Layout" as an 'AdWord'. The court of appeal, the Higher Regional Court of Dusseldorf, had decided that this use did not infringe the claimant's company name. The Dusseldorf court ruled that there was no likelihood of confusion because users of search engines knew how to distinguish between advertisement and actual search results.

The decisions are eagerly awaited, especially after the Bundesgerichtshof had previously indicated it might refer this question to the ECJ. It is expected that the court will consider the cases both under trade mark law aspects and under the principles of unfair competition law. This new Kat believes that this could really be decided either way and there are good arguments for both views ... we will know more on 22 January.

The official website of the German Federal Supreme Court can be found here.

Cats (and Dogs) learning German here