On December 14, 2012 the German Federal Supreme Court had to decide once more in a case regarding the admissibility of keyword advertising. The Court confirmed and specified its earlier case law (file number I ZR 217/10).
The plaintiff in the case was the operator of the "MOST Shop" on the website www. most-shop.de, on which it marketed chocolates under the trademark "MOST." The defendant, who also operated a website on which it offered presents and chocolates, had entered as a keyword "chocolates" and as a further option "broadly connected keywords," in the Google search engine. The "broadly connected keywords" also contained the term "MOST chocolates." The consequence of this was that the advert of the defendant popped up on the right hand side next to the search results if a third person entered the search term "MOST chocolates" into the search box. The plaintiff regarded this as an infringement of the "MOST" trademark.
The German Federal Supreme Court took a different view, reversing the judgment of the Court of Appeals, and rejected the complaint. The Supreme Court substantiated its decision with the argument that an advertisement that pops up in a commercial segment which is clearly separated from the search result list that is also especially marked in that way; and that does not include the mark, any reference to the trademark owner or products offered under the trademark (as in the case at issue), does not interfere with the "indication of origin" function and therefore cannot be regarded as a trademark infringement. Thereby, the German Federal Supreme Court confirmed its 2011 decision (German Federal Supreme Court, decision of January 13, 2011, I ZR 125/07, Bananabay II). Moreover, it specifies that this should also be the case if the advertisement does not contain an explicit notice that the advertiser and the trademark owner are not economically connected. The fact that the advertisement mentions products by its generic name for which the trademark is protected (as in this case "chocolates") is not enough.
The German Federal Supreme Court stated that this opinion is in line with the case law of the Court of Justice of the EU (CJEU) and therefore it took the view that it is not necessary to refer the case to the CJEU. Pursuant to European Community law, it is up to the national court to determine the question on the interference of the "indication of origin" function based on the standards set by the CJEU and taking into account all relevant circumstances.
The decision of the German Federal Supreme Court is persuasive and is in line with previous case law. If an advertisement is displayed in a form clearly separated from the search results, customers are not kept from accessing the website of the trademark owner via the search result list. Therefore, the trademark owner has to accept the advertisement (which is marked as such) in such cases.