BGH on misleading Google ads
The I.E. Civil Senate of the Federal Court of Justice, which is responsible for trademark law, among other things, has today ruled that a trademark proprietor may object to the use of his trademark in an advertisement after a Google search if the ad is based on the specific design of the misleading and customers are guided (also) to the offer of third-party products by the advertising effect of the brand (also) exploited in this way. More information on the exact contents of the procedure can be found in this blog post.
The Federal Court of Justice has rejected the defendant’s appeal. As a result, the Court of Appeal was right to take the view that the applicant could prohibit the defendants from using their own trade mark in the contested advertisements on the grounds that the actual use was misleading.
In principle, however, the fact that a dealer offers competitive products in addition to products from the brand manufacturer does not preclude the use of the trade mark in the advertising for that product range, provided that the legitimate interests of the proprietor of the trade mark Maintained. However, if a brand is used misleadingly in advertisements after a Google search due to the specific design of the ad, so that customers are guided (also) to the offer of third-party products by the advertising effect of the brand thus exploited, the trademark owners to oppose that use of the trade mark.
Thus, the case was in the proceedings now decided by the BGH. Users would expect the advertised products to be shown when they click ads. In the specific case, the design of the advertisements gave no reason to assume that only a summary of quotations would be presented, in which, without separate identification, the marks at issue were included on an equal footing with offers from other manufacturers. The shortened addresses of the websites under the text of the advertisements – e.g. www.amazon.de/brand+bicycle bag – regularly suggest that this link leads to a compilation of offers on the Amazon website, which contains the products of the advertised brand List. However, if customers are in fact led to quotation lists which also contain third-party products, the trade mark would be used misleadingly in the advertisements at issue. The applicant was able to oppose that use of the mark.
