The German Federal Court of Justice (Bundesgerichtshof, BGH) (ruling of 12.03.2015; Case: I ZR 188/13) was requested to hand down a ruling on a case in which a trademark owner prohibited a competitor from using the former’s mark for his own purposes within the scope of Internet advertising. Trademark owners may submit a general trademark complaint to prevent their marks from being used on Google. Only after the trademark owner has given their consent may a third party use the mark on Google. In the court’s view, the submission of a general trademark complaint does not, in itself, represent deliberate hindering of competitors. A competitor does, however, have a claim to use of the trademark if advertising with it does not infringe on trademark rights – if, for example, the rights relating to the use of the mark are exhausted. This is, for example, the case insofar as the trademark owner has put the goods into circulation in the European Economic Area. The trademark owner may, in such cases, not refuse a competitor the use of the mark for these goods; this applies, in particular, to sales-related advertising. The third party should, in cases of doubt, make an enquiry to the trademark owner and obtain approval for usage. Should, following this, the trademark owner wrongly refuse permission then this represents deliberate hindering of a competitor. The ruling has successfully contested this.
Conclusion: The trademark complaint procedure at Google offers trademark owners a possibility to limit the use of their marks. Since they have been granted this possibility they also, however, have a comprehensive duty to examine whether they must give their consent in each specific case of advertising by a third party or a competitor. Corresponding enquiries from third parties must thus be examined carefully.