Frankfurt court holds that using a third party's trade mark as Google AdWords is not a violation of German law

11 August 2008

Dr Fabian Niemann, Dr Ulrich Sachs

There is much dispute in the German higher regional courts as to whether using trade marks as AdWords breaches German law. The Higher Regional Court of Frankfurt has decided that as long as an advertisement is clearly separated from the search results, using a third party's trade mark as Google AdWords would not constitute an infringement of German law.

The opinion (file number 6 W 17/08) of the Higher Regional Court in Frankfurt, known as the Oberlandesgericht Frankfurt, is shared by other major German Higher Regional Courts (Köln, Düsseldorf and Munich), whereas other Higher Regional Courts (such as of Stuttgart, Dresden and Braunschweig) have a dissenting view.

The facts

The claimant owns a trade mark including specific wording. The defendant booked an advertisement via the Google AdWords program. The claimant also specified various keywords close to the claimant's trade mark to link to its advertisement. The defendant opted for Google's "Broad Match" technology. Broad Match is an algorithm displaying advertisements where search terms are close to the keywords booked. The use of the Broad Match technology led to the defendant’s advertisement being displayed next to search results where users had typed in wording forming part of the claimant’s trade mark. Google displayed the defendant's advertisement on the right side of the page showing the search results, and separated it by a white space and a black line from the search results.

The findings

The Oberlandesgericht Frankfurt ruled that the defendant had not violated the claimant's rights. The court did not consider that rights had been infringed even if keywords are specified which include third party trade marks.

The Oberlandesgericht Frankfurt’s view was that the user of the Google search engine is familiar with the distinction between search results (displayed at the left hand side of the search results page) and sponsored results (displayed at the right hand side of the search results page). The court held that even directly specifying the claimant's trade mark as a search keyword term would not constitute an unlawful use of the claimant’s trade mark. Due to the clear distinction between the search results and advertisements, the advertisements will not be linked by the user to the search term. The court therefore considered that there will be no relevant use of another party's trade mark if it is just used as an AdWord. The court’s view was that it is even clearer that using keywords and advertising that were only similar to the claimant's trade mark would not violate the German Act on trade marks.

The Oberlandesgericht Frankfurt also ruled that neither the use of the keywords or advertisement violated the German Act on Unfair Competition. As the advertisement was clearly separated from the claimant's trade mark (or search terms similar to it), the user would not associate the claimant's products or services with the defendant's advertisement.