The German Federal High Court (“BGH”) ruled on 12 March 2015 that the refusal of a trademark owner to give his consent to the legal use of its trademark in an Adword-advertisement of a competitor constitutes an illegal deliberate obstruction of a competitor according to section 4 no. 10 of the German Unfair Competition Act (BGH I ZR 188/13).

Usually the trademark owner is the plaintiff in Google Adword-cases who intends to stop the unlawful use of its trademark. However, in the present case the plaintiff was an entrepreneur who purchases and sells used Rolex-watches and who intended to use the trademark “ROLEX” in an advertisement not as a search-keyword, but as an Adword as described below

Purchase: Rolex watches

Purchase: easy, quick, competent

Purchase: Rolex-watch urgently needed

www.(….)

Google refused to publish such advertisement, because the trademark owner had filed a general trademark complaint due to which the trademark “Rolex” could no longer be used in GoogleAdwords and the trademark owner (defendant) denied the requested approval of the advertisement.

The BGH ruled that the plaintiff was entitled to use the trademark “ROLEX” as described above due to exhaustion of the defendant’s trademark rights for the respective goods that were subject to the advertisement. Therefore, the defendant was not entitled to deny its consent in respect of the publication of the advertisement.

According to the BGH, the mere filing of a trademark complaint at Google does not constitute a deliberate obstruction of the plaintiff as such general trademark complaint would serve the purpose to protect the defendant’s trademark rights in the first place.

However, at least by actively denying the approval of the intended Adword-advertisement the defendant crossed the border to a deliberate obstruction. The BGH reasoned that such refusal would not serve the protection of the defendant’s trademark rights – as they would not be infringed by the respective advertisement – but that it would only serve the impairment of the competitive self-realisation of the plaintiff.

The BGH highlighted in particular that the law suit would not be unfounded due to a primary responsibility of Google as the trademark owner – and not Google – directly obstructed the plaintiff.

The present decision looks at the GoogleAdword-cases from a different angle and shows that also trademark owners have to ensure not to prevent a legal use of their trademarks by filing general trademark complaints at Google. As a consequence trademark owners should carefully review all respective requests for approval of trademark use with regard to Google Adwords and similar functions of other search engines in detail.