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There have been many cases in recent European legal history dealing with different instances in which the use of keywords in internet searches has been judged to be trademark infringement. A case in February decided by Germany’s Federal Court of Justice (Supreme Court) highlights another of these cases, on this occasion concerning the German trademark ‘Ortlieb’ (registered for bags and other products).
In the case, the Supreme Court differentiated between four different sets of facts that had been dealt with by the courts up to the time the decision was handed down:
(1) The operator of an online shop who provides users with a search engine for products offered on its website, and who saves trademarks as keywords for the searches performed on the search engine, “uses” these trademarks within the meaning of the EU trademark directive, as determined by the Supreme Court in a 2008 case, Powerball.
(2) The operator of an online marketplace platform who enables third party vendors who offer goods on its platform to choose for themselves different keywords for the platform’s search engine does not itself use the trademarks that correspond with the keywords; it is rather the third party vendors who use the trademark in the context of their own commercial communication. This rule was established by the Court of Justice of the European Union (CJEU) in 2011 in L’Oréal/eBay.
Jurisdiction report, Jens Künzel, Krieger Mes & Graf v. der Groeben, keywords, adworks, Ortlieb, trademark registration, internet search