The use of someone else’s trademark may be permissible in keyword advertising. This was decided by the Higher Regional Court of Braunschweig in a judgment dated February 9, 2023 (Case No.: 2 U 1/22).
Advertising on the internet often occurs through so-called keyword advertising, which means booking certain keywords for which the advertisement appears in the search engine operator’s results list. This can be problematic if a protected third-party trademark is used as a keyword. Then the question arises as to whether keyword advertising constitutes a violation of trademark law, according to the commercial law firm MTR Legal Rechtsanwälte, which specializes in IP and trademark law.
The Higher Regional Court of Braunschweig has now ruled that using someone else’s trademark in keyword advertising may still be permissible. In the underlying case, the defendant operator of a comparison portal used a well-known and protected wordmark in keyword advertising. This led the search engine to list it in second place, just behind the ad of the trademark owner, who also operates an internet comparison portal. Through the unauthorized use of its registered trademark, the trademark owner saw both its trademark rights violated and considered it as unfair advertising.
In the first instance, its lawsuit for injunction and determination of liability for damages was largely successful. However, in the appeal, the Higher Regional Court of Braunschweig overturned the judgment. According to the court’s opinion, there was no violation of trademark rights or company identification. Therefore, it dismissed the lawsuit.
In its reasoning, the court stated that, according to the case law of the European Court of Justice, a trademark owner can only object to the use of a sign identical to their trademark if this impairs the functions of the registered trademark. This was not the case here, as the sensible internet user could recognize from the advertisement that the service offered by the defendant did not originate from the trademark owner.
The labeling as an ‘ad’ above the text clearly indicates that this is a paid advertisement in which the wordmark is not mentioned and there is no reference to the trademark owner. There was neither inadmissible trademark use nor unfair competition, the court concluded.
Experienced lawyers at MTR Legal Rechtsanwälte provide advice on trademark law and IP law.
