Brand bidding: Misleading use of the AdWord “PARSHIP”

The plaintiff owns the Community Trademark “PARSHIP” and has been operating an online dating service under its website parship.de since 2001. The defendant also runs such a dating service under its website partnersuche.de. The plaintiff became aware that when entering the word “parship” in the Google search engine, an advertisement of the defendant was displayed on the right side of the listed search results showing the following text:

“Partnersuche.de kostenlos
Deutschlands bekannte Partnersuche.
Die Partnersuche mit Niveau!
www.partnersuche.de”

The German word “Partnersuche” is a generic term that can be translated as „search for partners”. The ad itself promotes the online dating service offered by “Partnersuche.de” as being without payment and high standard and further claims to be “Germany’s well-known search for partners”.

The ad appears because the defendant acquired the Google AdWord “parship”. The plaintiff took the view that such a use of the word “parship” infringes its trademark right (Art. 9 (1) (1), 9 (1) (2) (a), 9 (2) (d) of the Trademark Regulation) and sought an injunction against the defendant.

The OLG Hamburg in its decision of 22.01.2015 took the same view and ruled in favour of the plaintiff. The judges pointed out that even though it is generally permissible to use a third parties trade mark as a keyword, this did not apply to the underlying case due to the specific circumstances. The Google ad in question does not make it sufficiently clear that the plaintiff and owner of the trade mark is not the advertising company. Hence, the manner in which the defendant uses the word “parship” is compromising the indication-of-origin function of the plaintiff’s trade mark. 

The OLG referred to relevant decisions of the CJEU according to which the origin function of a trade mark is compromised if the advert displayed does not make it clear if it is the owner of the trade mark or someone else advertising. In the underlying case the advertising message and the advert link are kept very vague about the question of who is advertising.