The German Federal Supreme Court has recently decided that the use of trade names as a metatag infringes the owner’s rights (Case I ZR 183/03 - Impuls, decision of May 18, 2006). The question whether the use of trade marks and trade names as a metatag infringes the owner’s rights had been highly disputed in the past, as metatags are generally not visible to the Internet user.
The German Federal Supreme Court held that for constituting a use as a trade mark it is not necessary that the metatag is perceivable to the Internet user on the infringer’s website. It is sufficient that the metatag influences the search result and leads the Internet user to the website using the trade name as a metatag. Against this background the Court concluded that the sole purpose of the metatag was to attract the user to the infringer’s website.
A likelihood of confusion arises in the case where the Internet user who is familiar with the trade mark or trade name uses this term as a search word and receives information about a website operated by a competitor who offers the same goods or services as the trademark owner. In such a situation, the Internet user might mistake the infringer’s offer for the offer of the trademark owner. This risk is sufficient for establishing a likelihood of confusion, and it is irrelevant whether the confusion can be eliminated subsequently by getting involved more in detail with the infringer’s website.
Furthermore, the Court held that there exist situations in which the use of a competitor’s sign is legitimate. For instance, the use of a competitor’s trademark would be allowed if it is used in the context of a comparative advertisement. However, such a privileged use would require that the sign is not only used as a metatag, but that it is visible to the user
The decision of the German Federal Supreme Court concludes a long-time dispute and strengthens the rights of trademark and trade name owners. The decision sets clear boundaries for the use of trademarks in the Internet by third parties who try to attract users to their own services. It also shows that modern trademark law is perfectly capable of dealing with the particularities of the Internet. However, not all questions have been answered by the Court. It is still open to discussion whether the use of metatags does also constitute an act of unfair competition. The Court will have the chance to answer these questions in the near future since it will have to decide whether the use of trade marks for keyword advertising is permissible under German Trademark and Unfair Competition Law. The Higher Regional Courts have reached differing decisions on this question.