It is fact well known to German lawyers that the various German Higher Regional Courts have in the past notoriously disagreed as to whether use of a third party's trade mark as an AdWord can amount to trade mark infringement. The Higher Regional Court of Braunschweig, in particular, had previously taken the view that it was irrelevant whether trade mark was directly chosen as AdWord or whether different AdWords had been selected (i.e. a generic term) via Google's "broad match" option. [By way of background information: the "broad match” option prompts the search engine without any further input by the advertiser to associate other terms with the chosen AdWord. Those other terms can also include registered trade marks and the advertiser has the option to exclude unwanted search terms from the results. However, it appears that the "broad match" lists can change due to Google's inherent search dynamics.] In the court's previous opinion both cases amounted to trade mark infringement. What is more, the court had even placed a duty on advertisers using Google's “broad match” option to check whether Google's suggested keyword list included a competitor's trade mark.

After the German Federal Supreme Court's “pcb”- decision (I ZR 139/07) of January 2009 (see Class 46 post here), the OLG Braunschweig appears to have changed its strict views. In its court order of 25 March 2009, the court now states that use of an AdWord that is similar to a third party's trade mark via the "broad match" option does not necessarily amount to an infringement of a competitor’s trade mark under Article 14(2) German Trade Mark Act. More precisely, there is no trade mark infringement where an advertiser selects the option "broad match" and where it can not be shown that the third party trade mark had initially been revealed on Google's suggested keyword list [and thus could have been excluded by the advertiser]. However, the court appears to have left it open whether it is trade mark infringement where an advertiser selects the option "broad match" and the trade mark had been initially been revealed in Google keyword list.

The court order can be read in its anonymized entirety on markenservice.net's blog.

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