Dipl.-Ing. Nils Winthuis
With its judgement of December 13, 2012, the Federal Court of Justice confirmed and specified its jurisdiction regarding the legitimacy of keyword advertising. In the present case, the plaintiff was the proprietor of an exclusive license to the German trademark “MOST”, which is, among others, registered for chocolates and chocolate. The plaintiff runs an online shop and distributes premium confectionary and chocolate products via this shop.
The defendant ran an adwords advertisement for his online shop with the word “chocolates” as the keyword and among the list of “broad match keywords”, the keyword “MOST chocolates” could also be found. When a user entered the keyword “MOST chocolates”, an advertisement of the defendant appeared on the right side next to the search results with a reference to the defendant’s online shop. In this online shop of the defendant, no products with the mark “MOST” were distributed.
According to the jurisdiction of the Federal Court of Justice, a trademark infringement in the light of an impairment of the origin function of the mark is generally excluded in “keyword advertising” when the advertisement appears in an accordingly marked advertising block which is clearly separated from the hit list. In these cases, neither the trademark itself nor any other reference to the trademark proprietor or the products offered under the mark may be contained. These conditions were met in the present case.
The Federal Court of Justice now clarified that the above-mentioned conditions are also valid when the advertisement does not refer to a missing economic connection between the advertiser and the trademark proprietor. The Federal Court of Justice further assumes that the circumstance alone, that products of the offered kind under the mark (here: MOST) with generic terms (here: chocolates) are named in the ad, does not lead to an impairment of the origin function of the mark.
Information by the press office of the Federal
Court of Justice, no. 211/2012
Author: Dipl.-Ing. Nils Winthuis (Patent Attorney), Update 1/2013
Patent Attorneys and Lawyers Bockhorni & Kollegen
Munich/ Germany
www.patguard.de
