EsoterisGoogle's client was not eBay AG, but an advertising partner of its German subsidiary. Nonetheless, only eBay was sued. The link directed to eBay pages.
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The court reminded European and German laws, pursuant to which the use in commercial transactions is only prohibited if the mark is used as a trademark.
The court noticed that the ad was placed alongside the display of hits for the term "Esoteris" in a separately labeled column for advertisements. The four-line ad was headed with the underlined and color-highlighted trademark. The intention here was obviously to gain the attention of persons who had previously entered the term "Esoteris" in the Google search engine function. The ad was therefore evidently one which was supposed to refer to the Respondent's trading platform. This constitutes a decisive difference to Adword ads, where competitors of a trademark holder expressly use the trademarks of their competitors within AdWord ads to create the impression that they have a direct business relationship to the trademark holder. At minimum, a risk of confusion exists in these cases because the mark used is related in a conceptually relevant fashion to the trademark.
In the case of the ad placed for the Internet auction company eBay, the assumption of such a business relationship is remote. Instead, Internet users recognize that they are merely being offered information about "Esoteris." Internet users know that the Respondent (the Internet auction company known to the users) is not stating that it offers products under this trademark or claiming the ownership of this trademark. Instead, Internet users (rightly) assume that via the eBay trading platform one or more sellers offer products with the trademark "Esoteris." That via the link other offers will also be displayed that have nothing to do with the trademark "Esoteris" is because when searching the term Internet users are shown as hits all documents that contain the sequence of characters constituting the term.
Users thus know that documents will also be included in which the term is used in a different fashion or in which the identifying sequence only forms part of another term. Users are also familiar with the inclusion of similar, though slightly variant terms, because this extended function is also used in Google.
Based on this situation, users will not expect from the challenged ad to only be displayed offers at the Respondent's website that use the term "Esoteris" to identify the offered goods or services. Users will instead expect the offers to contain the character sequence or something similar in their description. Yet this need not be for purposes of identifying the goods or services. The offers might also contain this term because, for example, the term is contained in the descriptive adjective "esoterisch" (esoteric) or because it is nearly identical to the term "Esoterik" (esotericism). Users are aware of this. They do not get the idea that specific goods or services are going to be labeled "Esoteris." Yet this would be a prerequisite for assuming use as a trademark.
The court found the trademark "Esoteris" is thus not used as a trademark.
District Court of Hamburg, 12th Civil Division, Jan. 3, 2008