JURISDICTION REPORT: GERMANY
TRADEMARKS ON WEBSITES: THE POWER BALL CASE
Jens Künzel Krieger Mes & Graf v. der Groeben
Germany’s Federal Supreme Court recently handed down its Power Ball decision, in a rather unusual case of trademark infringement, which will prove useful for trademark practitioners, especially in the Internet context.
Te defendant’s website, an online shop for a diverse range of products, contains a search engine for its articles. If the user initiated a search for products labelled ‘power ball’ (similar to the plaintiff’s trademark ‘Power Ball’), the search engine generated an array of ‘results’. However, none of the generated results included the original Power Ball products.
Corresponding results were generated through searches via the Google search engine; here, the defendant’s site was shown in second place under the header ‘Power Ball’. Te defendant had apparently internally ‘earmarked’ (but not labelled) certain alternative products offered on its website with the plaintiff’s trademark so that they would show in searches for the original products. None of these alternative products was actually labelled with the plaintiff’s trademark; the website merely showed them under a header saying that these were the results of a search for ‘power ball’.
Te plaintiff attacked the ‘use’ of his trademark on the defendant’s website as a trademark infringement. Te first instance court (the Munich District Court) dismissed the action, on the grounds that the plaintiff’s trademark was not used ‘as a mark’ within the meaning defined by the European Court of Justice. Te Munich Court of Appeal reversed the first instance decision and granted the claims for trademark infringement, including a cease and desist order. Tis result, and the reasons the Munich Court of Appeal gave for it, were confirmed by the Federal Supreme Court.
Te court first referred to a definition of using a mark as a mark that it had adopted in earlier cases. According to this definition, a mark is used as a mark when it serves to differentiate certain goods from others. For cases where a likelihood of confusion is claimed, the European Court of Justice (ECJ) narrowed that wide definition down in 2008 in the O2/Hutchison case. According to the ECJ, a likelihood of confusion can only be claimed where the main function of the mark—which is to provide a guarantee for the origin of the product—is or may be affected. Te Federal Supreme Court of Germany adopted this precondition. In the Power Ball case, the court held that ‘using’ a trademark in order to influence the results in an Internet search engine for products using that trademark does affect the trademark’s ability to provide a guarantee of the product’s origin. It is not relevant whether a public or internal search engine is used. However, the court apparently thought it relevant that the power ball or Power Ball trademarks were still shown in the header of the pages showing the results aſter the search had been performed. Tis may adversely affect the main function of the plaintiff’s trademark.
www.worldipreview.com
“ ACCORDING TO THE ECJ, A LIKELIHOOD OF CONFUSION CAN ONLY BE CLAIMED WHERE THE MAIN FUNCTION OF THE MARK—WHICH IS TO PROVIDE A GUARANTEE FOR THE ORIGIN OF THE PRODUCT—IS OR MAY BE AFFECTED.”
Te court did not elaborate on cases where the trademark is not actually shown on the results pages. Based on the ECJ’s definition of using a mark as a mark, the result should not be different since the main function of the mark may still be adversely affected, even if the consumer does not actually see the trademark and the results (the alternative products) on the same page. It is sufficient that he has performed a search for the mark and generated results that have no connection to it.
Te defendant argued that the use of the power ball mark on its website was admissible under the rules concerning comparative advertising. Te Federal Supreme Court leſt open whether this use was made at all in the context of comparative advertising. Even if it were, such use would not be admissible under Article 4 of the EU Directive on Comparative Advertising, since the use of the power ball mark by the defendants could cause confusion between the parties’ products.
Tis case clarifies some points in connection with Internet trademark uses.
Jens Künzel, LLM, is a partner at Krieger Mes & Graf v. der Groeben. He can be contacted at:
jens.kuenzel@krieger-mes.de
World Intellectual Property Review September/October 2010 81
Page 1 |
Page 2 |
Page 3 |
Page 4 |
Page 5 |
Page 6 |
Page 7 |
Page 8 |
Page 9 |
Page 10 |
Page 11 |
Page 12 |
Page 13 |
Page 14 |
Page 15 |
Page 16 |
Page 17 |
Page 18 |
Page 19 |
Page 20 |
Page 21 |
Page 22 |
Page 23 |
Page 24 |
Page 25 |
Page 26 |
Page 27 |
Page 28 |
Page 29 |
Page 30 |
Page 31 |
Page 32 |
Page 33 |
Page 34 |
Page 35 |
Page 36 |
Page 37 |
Page 38 |
Page 39 |
Page 40 |
Page 41 |
Page 42 |
Page 43 |
Page 44 |
Page 45 |
Page 46 |
Page 47 |
Page 48 |
Page 49 |
Page 50 |
Page 51 |
Page 52 |
Page 53 |
Page 54 |
Page 55 |
Page 56 |
Page 57 |
Page 58 |
Page 59 |
Page 60 |
Page 61 |
Page 62 |
Page 63 |
Page 64 |
Page 65 |
Page 66 |
Page 67 |
Page 68 |
Page 69 |
Page 70 |
Page 71 |
Page 72 |
Page 73 |
Page 74 |
Page 75 |
Page 76 |
Page 77 |
Page 78 |
Page 79 |
Page 80 |
Page 81 |
Page 82 |
Page 83 |
Page 84 |
Page 85 |
Page 86 |
Page 87 |
Page 88 |
Page 89 |
Page 90 |
Page 91 |
Page 92 |
Page 93 |
Page 94 |
Page 95 |
Page 96 |
Page 97 |
Page 98 |
Page 99 |
Page 100 |
Page 101 |
Page 102 |
Page 103 |
Page 104 |
Page 105 |
Page 106 |
Page 107 |
Page 108 |
Page 109 |
Page 110 |
Page 111 |
Page 112