30 April 2018
The Claimant owns the German trade mark RESISTOGRAPH used for drilling machines to test the sturdiness of wood structures. The Defendant used the term on its website presenting himself as a manufacturer of competing drilling machines. The Defendant also provided on his website the name and contact details of his German subsidiary next to the symbol of a German flag. On a separate part of the website the Defendant announced upcoming events and fairs in Germany where his products will be presented.
The Court of Appeal held that, according to earlier rulings, the use of a sign registered as a German trade mark on a foreign website may infringe the German trade mark rights if an economically relevant nexus to Germany is present. According to earlier rulings, such nexus is established if the website is directed at customers in Germany, e.g. because the content of the website is in German or because the contact information indicates that the website operator is willing and able to communicate in German.
The Court of Appeal held that such an economically relevant nexus was established not only by the use of the trade mark in the domain name and in the content of the website but also by the use of the term “RESISTOGRAPH” as a metatag for the website.
The Supreme Court approved of the reasoning of the Court of Appeals but reversed the ruling on the lack of evidence. However as obiter dictum the court held that the use of certain terms as metatags on foreign websites (e.g. search engine optimisation) may indeed infringe German trade mark rights, if the search engine optimisation aims at increasing the reach of the website in Germany or if the operator of the website neglects to undertake necessary and reasonable measures to stop search engine crawlers accessing and listing the website in German search engines.
Despite the Supreme Court's reversal of the judgment for lack of evidence, the obiter dictum remains that the use of a sign as a metatag for a foreign website might under appropriate circumstances infringe trade mark rights in Germany. However, neither the Court of Appeal nor the Supreme Court specified what circumstance will lead to infringement.
According to the Supreme Court, an economically relevant nexus is established by the use of a trade mark as a metatag, ad-word or keyword for a German search engine so that the website operator directs his website at customers in Germany by way of search engine optimisation or – despite reasonably measures – neglects to ban search bots from listing his website in German search engines.
However, due to the ambiguity of the Supreme Court’s statement, website operators are not left with a clear rule how to avoid infringement. Accordingly it is only a question of time before the Courts will have to clarify the Supreme Court’s comments.