Metatag issue divides German courts

The question of whether the use of another party's mark in the metatags of a website violates trademark law is still controversial in Germany. Contrary to a decision of the Regional Court of Dusseldorf earlier this year, the Regional Court of Munich I has ruled that such use constitutes a breach of trademark law (17 HKO 10389/04, June 24 2004).

Impuls Medien Marketing GmbH, a company that provides various financial and insurance services, owns registrations for an IMPULS mark. It filed a complaint with the Regional Court of Munich I against an entity operating a website under various domain names, including 'moonball.de' and 'yando.de'. Impuls stated that the metatags for the defendant's website contained its IMPULS mark in combination with various insurance terms, meaning that internet searches using its mark as a keyword would bring up the defendant's website. Impuls maintained that this infringed its mark because the defendant's website provided links to a number of its competitors.

The Regional Court of Munich I upheld Impuls's claim and affirmed that the use of another party's trademark or trade designation in the metatags of a website infringes that mark pursuant to Sections 14(2)(2) and 15(2) of the German Trademark Act.

In contrast to this decision, the Higher Regional Court of Dusseldorf held last year, in a case involving the same parties, that the use of Impuls in the metatags of the defendant's website was non-infringing (20 U 21/03, July 21 2003). It pointed out that metatags are not:

• visible to internet users: they appear in the code of the website and are only read by search engines;
  
  
• capable of characterizing either the company that is using them, or the goods and services sold by that company; and
  
  
• exclusive to a specific website and therefore are not perceived by the public as an indication of origin, unlike domain names.

It applied the same reasoning in a subsequent decision (see Metatag use of trademark is not infringement, court rules).

An appeal against the Higher Regional Court of Dusseldorf's decision in the IMPULS Case is pending with the Federal Supreme Court. The Supreme Court's ruling should finally resolve the issue of whether metatag use of trademarks is infringing.

Friederike Bahr, Beiten Burkhardt, Munich