The German Federal court (BGH) has asked the European Court of Justice (ECJ)
to decide whether or not the use of a trademark as a Google adword is
considered use as a trademark.
At the end of January, the BGH has published its opinion on three appeals.
In the first case a company objected against the use of its trademark "bananabay"
as a keyword by one of its competitors. Because German trademark law is
based on EU law (First
Directive 89/104/EEC of the Council, of 21 December 1988, to Approximate the
Laws of the Member States Relating to Trade Marks), the BGH could not
decide on its own, especially as the ECJ has already been asked to consider
the same issue by a French an a Austrķan court (see:
European Court of Justice will hear
Google Adwords lawsuit!
). It is expected that
it will take the ECJ about two years to decide the issue. But the French
case, brought by Louis Vuitton, is already pending for eight months. So my guess
is, we can expect the final word on adwords at the beginning of 2009.
The decision will be crucial for Google and for the keyword advertising
business in Europe.
In the second case before the BGH, the plaintiff, PCB Pool, objected
against the use of pcb as adword. But according to the BGH there was no
trademark infringement. PCB is an acronym of printed circuit board and the
keyword used, descriptive. So the BGH overturned a lower court's ruling.
The finding in the third case could be the most interesting one. Beta
Layout had complained about the use of its company name as keyword. The
protection of company names does not have its roots in EU law, so the BGH
could decide the case. According to the press release he found that there
was no trademark violation because internet users are capable of
distinguishing between ads and normal search results.