A trademark infringement presupposes that the third-party sign is disclosed to the general public. This is not the case with mere keyword targeting in the context of Google AdWords ads.
The defendant is advertised on the internet search engine Google as part of the AdWords ads (sponsored links) offered there for the printing products it offers at www.posterXXL.com. It uses the keyword / AdWord "poster 24-hour delivery" for this purpose, which means that its ad is displayed as a sponsored link next to the free search results when searching for this phrase or parts thereof.
The plaintiff also offers printing products and is the owner of the word/figurative mark "Plakat 24" in this respect. It is seeking an injunction against the use of the above-mentioned AdWord due to trademark infringement.
The court's decision
The court is of the opinion that there is no trademark infringement (LG Leipzig, judgment of February 8, 2005 - 5 O 146/05).
It is correct that the trademark "Plakat 24" for printing products, even in conjunction with the element 24 as a reference to an online store or 24-hour delivery, is predominantly descriptive and therefore only has a low degree of distinctiveness. Furthermore, a trademark infringement necessarily requires that the trademark is used in the course of trade, i.e. in public, which is not the case with AdWords - provided that the sign is not also used in the advertisement.
The court also refers to the function comparable to metatags as a pure search term, which only allows the conclusion that the respective word appears on the page, but not that this page also originates from the trademark owner. It is just as conceivable that the offer - in the case of goods - is attributable to a reseller or - e.g. in the case of comparative advertising - also to a competitor. Ultimately, nothing else applies to advertisements on Google AdWords. A different opinion can be found in WRP 2004, 180 (OLG Karlsruhe) and WRP 2000, 775 / MMR 2000, 546 (OLG Munich). However, the Regional Court of Leipzig obviously considers this case law to be incorrect or at least outdated.
Moreover, the serious (phonetic) differences between "Plakat 24 Stunden Lieferung" and the mark "Plakat 24" further prove, in the opinion of the court, the non-existence of a trademark infringement.
The court also did not see an infringement of competition from the point of view of hindering a competitor, since the use of the mark by the defendant was to be generally understood as advertising printed goods delivered within 24 hours. Accordingly, there is a legitimate use of the term as a generic term.
The plaintiff's appeal to the Higher Regional Court of Dresden was unsuccessful (Higher Regional Court of Dresden, judgment of August 30, 2005, 14 U 498/05).
Conclusion
The judgment should be treated with caution. On the one hand, there are a number of judgments - albeit on different cases - that come to the opposite conclusion. Furthermore, the "Plakat 24" trademark is in fact only weakly protected and not very well known.
In addition, the mark was not adopted 1:1, but only completely degraded to a purely descriptive term by the addition of "...hours delivery".
The decision must nevertheless be regarded as correct. However, this does not mean that the use of third-party trademarks as AdWords is permissible across the board.
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