The German Federal Supreme Court (BGH) has today delivered its eagerly anticipated three "AdWord" decisions. The BGH's press release explains that all three decisions are based on cases where the display of sponsored links was visually separated from the actual search results and the actual internet advertisement did not include any reference to the respective claimants' trade mark/company sign or goods/services. It was expected that the BGH would follow some of the other national courts and refer the matter to the ECJ. The BGH lived up to the expectations by deciding two of the cases and referring the third matter to the ECJ. Class 46 has so far only seen the press release but based on the latter the BGH's question to the ECJ should be along the following lines: "Does the use of a third party's trade mark as a keyword/Adword on identical goods/services constitute trade mark infringement under the Directive?"

In "bananabay" (I ZR 125/07) the BGH decided that it had to be clarified whether the use of another party's trade mark as a keyword/Adword on identical goods/services was "use as a trade mark" and could constitute trade mark infringement. The BGH suspended the proceedings and refer this question to the ECJ under Article 234 EC-Treaty.

"PBC" (I ZR 139/07) concerned competitors that were active in the field of 'printed circuit boards'. The claimant owns a trade mark registration for "PCB-POOL" and the defendant used the sign 'pcb' as an 'AdWord'/keyword on its website. The BGH decided that the relevant specialist consumers would understand the acronym "pbc" as short for “printed circuit board”and ruled that the proprietor of a trade mark could not prohibit the use of a descriptive term (here: pbc), even if this term was used as a trade mark and even if this use caused a likelihood of confusion with a protected trade mark. No referral to the ECJ was necessary.

"Beta Layout" (I ZR 30/07) relates to the use of a company name as a keyword. The defendant had used the claimant's company name "Beta Layout" as an AdWord. Here the BGH confirmed the decision of the Higher Regional Court of Dusseldorf and ruled that the use of a company name as a keyword was permissible. Internet users would not assume that a sponsored link that was visually separated from the search results, originated from the claimant. Given that the legal protection of company names is not based on harmonised European law but a quirk of the German trade mark act, no ECJ referral was required.

The court's press release can be retrieved here in its entirety (in German). Further details can be found here.