German Supreme Court Rolex Trademark Ruling Could Cost Business

摘要

A recent ruling by the German Federal Court of Justice (BGH) permitting trademark holders to block the unauthorized use of their brand names in third party Google advertisements could prove to be a double-edged sword for business given that rights holders must be careful to exempt lawful third party requests or else face penalties for competition law violations, attorneys told Bloomberg BNA on May 5. In the decision, delivered on March 12 (Az. I ZR 188/ 13), BGH judges ruled that trademark holders' use of Google's "general trademark complaint" tool, which automatically blocks any use of a protected brand in Google advertisements, was "legitimate". However, the court also stipulated that, in accordance with principles of fair competition, the trademark holder must grant consent to third parties if their proposed advert does not infringe intellectual property rights.