23. May 16

BGH: Comparative advertising featuring third-party trademark may be permissible

The use of a third-party trademark in comparative advertising does not automatically constitute an infringement of trademark law. That was the decision of the Bundesgerichtshof (BGH), Germany’s Federal Court of Justice (Az.: I ZR 167/13).

GRP Rainer Lawyers and Tax Advisors in Cologne, Berlin, Bonn, Düsseldorf, Frankfurt, Hamburg, Munich, Stuttgart and London conclude: Using a third-party trademark in an online sales offer as part of a comparative advertisement designed to draw the attention of customers who employ a search engine to one’s own product does not on its own represent unfair exploitation of said third party’s reputation. That was the verdict of the 1st Civil Panel of the Bundesgerichtshof in its ruling of April 2, 2015.

In the instant case, the defendant marketed vacuum cleaner bags online. In the description, it made use of the wording “similar to…” when comparing the bags to a well-known brand. The manufacturer of this well-known bag had the trademark registered as early as 1985 and considered the comparative advertisement to be a violation of its trademark rights. After the courts of lower instance reached different conclusions, the BGH ultimately dismissed the claim.

The Karlsruhe judges ruled that this form of comparative advertising is permissible. Moreover, there was nothing in the present case to suggest that the advertisement featuring the third-party trademark was unfair or dishonest. The Court stated that the well-known branded product in question had not been degraded and consumers were not misled regarding the actual origin of the product due to the word “similar”. It held that there was no risk of confusion and therefore no infringement of competition law had been committed. The fact that the third-party trademark was being used for the benefit of another party needed to be tolerated, as this was said to be in the interests of consumers who might otherwise be unable to find the offers online via search engines.

The Court went on to say that it is permissible to use comparative advertising as a means of informing consumers about the advantages and properties of a product or service if the advertising is not misleading. The BGH held that, provided there are no indications of unfairness or dishonesty, comparative advertising is permissible.

That being said, comparative advertising can nonetheless prove to be a fine balancing act. It is easy to commit violations of trademark law or competition law, sometimes even unwittingly. Lawyers who are competent in the field of competition law can provide advice.

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