Trademark Law

Use of Google Adwords can breach trademark law

Germany’s Federal Court of Justice (Bundesgerichtshof, BGH) has decided that using a competitor’s brand name as a keyword in a Google Adwords list can breach German trademark law (Az. I ZR 172/11).

Use of Google Adwords can breach trademark law © ferkelraggae-Fotolia

Use of Google Adwords can breach trademark law © ferkelraggae-Fotolia

Google Adwords trademark infringement

The case concerned the owner of an online erotic shop called “eis.de”. The owner placed an advertisement using Google Adwords. As one of her keywords she chose “Beate Uhse”. This meant that Google displayed the following search result (translated from German) when the words “Beate Uhse” were entered:

Erotic Shop & Erotic Shop; Reductions of up to 94% guaranteed; Shop accredited by TÜV! Legitimate and discrete; Eis.de/_Erotik-Shop_&_Erotik-Shop

The proprietors of Beate Uhse, the famous chain of erotic shops, took the view that this use of their name breached German trademark law.

Trademark breach

The BGH agreed. It drew attention to European Court of Justice case law, which classifies the use of a competitor’s brand name for advertising purposes by a business which sells similar products as a trademark infringement. The legal requirement is that the brand name has a particular notoriety which is being exploited or devalued by the competitor.

The rights of the business which has had its brand name registered as a trademark the longest take precedence.

As the defendant in this case runs an erotic shop, a trademark infringement cannot be ruled out, the BGH ruled.

The case was remitted to the Higher Regional Court of Frankfurt am Main, as the judges had failed to conduct a proper evaluation of the facts in relation to the legal elements of a trademark infringement.

Now the Frankfurt court will have to consider the case again and decide whether the trademark rights of Beate Uhse have been exploited or devalued by the owner of “eis.de”.

Google Adwords – The general legal position

It should be noted that it is generally permitted to use known brand names as keywords, provided the brand’s image and character is not devalued.

The use of the competitor’s brand name as a keyword is generally still permitted under competition law where an advertisement simply offers an alternative product to that which the trademark owner offers.

Christian Solmecke is a partner at the law firm WILDE BEUGER SOLMECKE. He is the author of numerous legal publications in the area of internet and IT law. He is also an associate lecturer for social media law at the Cologne University of Applied Sciences.

Do you like this article? Feel free to rate it now:

1 Stern2 Sterne3 Sterne4 Sterne5 Sterne (Not rated yet)

RSSComments (22)

Leave a comment

  1. […] Use of Google Adwords can breach trademark lawThe German Federal Court of Justice has decided that using a competitor's brand name in a list of Google Adwords can breach trademark law. Read more here. […]

  2. The owner placed an advertisement using Google Adwords, with the breach of trademark law this stop the theft.

  3. Awesome things you’ve generally imparted to us. Simply continue written work this sort of posts. The time which was squandered in going for educational cost now it can be utilized for studies. Thanks

  4. Hello, The owner placed an advertisement using Google Adwords. As one of her keywords she chose Beate Uhse.

  5. I really appreciate the writer’s skills over here as he has presented the facts in the right manner. Also, he has kept the content simple, engaging and concise.

  6. If you having an issue with your email regarding Free initial assessment, kindly contact to Email help desk.

  7. Hi, This is really very nice work for users who need it. I want to share with you some interesting help desk website for all users who need assessment regard online email help.

  8. Hi Rechtsanwalt Christian Solmecke, you are really awesome to helping others. You can contact me if you looking for Hotmail Assessment.

  9. I really appreciate the author skills over here as he has presented the facts in the right manner. Also, he has kept the content simple, engaging and concise. Connect with us if there any need for MSN related query.

  10. Awesome things you’ve generally imparted for us. Simply continue written work this sort of posts. The time which was squandered in going for educational cost now it can be utilized for various Live mail queries also.

  11. Google AdWords is an advertising service offered by Google that allows a sponsor to pay to have their advertising material and website link appear more prominently as a result of a search for a particular keyword. If you facing difficulties in Google AdWords behalf of Outlook Email then get Outlook Support anytime.

  12. Google case, two class action trademark infringement actions were recently are You Tube, LLC (a Google company), AOL, LLC, Turner Broadcasting System, is their use of Google’s keyword-based advertising program AdWords. Thus, a Competitor can purchase advertising space from Google.

  13. Can Google Be Liable for Trademark Infringement? A Look at the “Trademark Use” Requirement as Applied to Google Adwords with Gmail.

  14. Internet Keyword Advertising and Trade Mark Infringement. The triggered banner ads, but did not do so as that would have Google and its partners the use could breach section. 52 of the Trade Of Zoho Office suite.

  15. Adword is no doubt a play on Google Adwords, an online advertising says the address is owned by “Verizon Trademark Services LLC. For example, British telecom giant BT uses Yahoo for their customer email, as did/do SBCGlobal. On September 22, Yahoo warned that a security breach.

  16. Our team provide help for Roadrunner webmail, so if you want your email password reset or fix your Time Warner Cable account, then take our Time Warner Cable Roadrunner Webmail Help.

  17. Subject to applicable law, Charter may give credit with respect to do so by applicable law, Charter will provide notice to Subscriber of a breach of the user’s software application like, Incredimail.

  18. Google AdWords trademark policies can be confusing. If you don’t have prior experience with intellectual property or trademark law. Take help from Re sellers can use trademark in the ad copy as long as the ad’s landing page.

  19. You will want to login to complete the trademark tutorial with the primary AT&T Internet member ID for account (same one used to pay bill) with the infringement and complete all steps for trademark law.

  20. HughesNet is in a breach of contract for the Gen 5 users who suffer through HughesNet will spend hours on the phone working your problem, Stated speeds and uninterrupted use of service are not guaranteed.

  21. This is an important practical skill, whether you need to use it to keep your …writing skills. You will also need to ensure that you do not give your email provider any Hushmail may even give up the contents of your messages to law enforcement.

  22. A license or right of use of Verizon Wireless or any other Trademark displayed into, any breach by you of any of these terms and conditions or applicable law.

Leave a comment

By submitting your comment, your consent to our privacy policy is deemed to be given.