The case: When entering ‘Poster Lounge’ as search terms in this order in Google, a link to the online marketplace Hood appeared:

‘Hood’ of Hood Media GmbH [Ltd.] is one of the largest online marketplaces that hosts auctions as well as online shopping:

 Google had taken the pair of terms ‘poster lounge’ from the source code of the ‘Hood’ page, where customers had previously searched for offers for posters and lounge items. . ‘Hood’s software had taken up these search terms and entered them at various points in the source code of the portal page as a new pair of terms, ‘poster lounge’.

The German Federal Supreme Court [BGH] considered this to be an infringement of the EU trade mark reproduced below, which was registered for posters and art prints:

The trade mark is used by Posterlounge GmbH [Ltd] which sells these articles on the Internet, via the domains ‘posterlounge.de’ and ‘posterlounge.com’, among others.

The Federal Supreme Court referred to the fact that the online marketplace had led the users of the search engine to its website via the pair of terms ‘Poster Lounge’. Posters and art prints from third parties had been offered there in the context of an auction or sale. However, advertisements by direct competitors of ‘Posterlounge’ had also been placed. It was irrelevant that ‘Hood’ itself was not selling any prints. The task of the online marketplace was to mediate between potential buyers. In that regard, the protection of the trade mark extends to those related services.

No doubt you will be aware of the fact that operators of an online marketplace ‘of a purely technical, automatic and passive nature’ are not in principle responsible for trade mark infringements committed by their users. So wasn’t it the same in this case? It was not!

The portal had generated its own content by incorporating the search queries of its users into the source code of its homepage. A portal operator has unlimited liability for its own information.

Because ‘Hood’ had influenced the result of Google’s selection process by way of its own information, the trade mark infringement committed by Google was directly attributable to ‘Hood’. Hood was not only ordered to cease and desist, but also to pay damages.

Learnings: An online marketplace should be carefully programmed to avoid brand violations. Online marketplace operators should take care that third-party trade marks do not appear in the source code of their website. The automated generation of such search terms involves considerable risk and must be carefully examined beforehand, Federal Supreme Court, 30. 7. 2015, I ZR 104/14.

See also the blog article: Prosecution of managers – counterfeits on a marketplace