BGH; 2022-07-14; I ZR 121/21
Decision by national courts in the field of European Union law — ECLI:DE:BGH:2022:140722UIZR121.21.0
Date: 2022-07-14
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82022DE0714(51)_ENG_SUMJURE
JURE summary
JURE summary
A waste disposal company and owner of the German wordmark ‘ALBA’ (hereinafter ‘the plaintiff’) filed an action against an operator of an internet search engine domiciled in Ireland (hereinafter ‘the defendant’) claiming protection among other things for the services of ‘disposal and utilisation of waste (…) through (…) recycling’.
The defendant offers, among other things, an advertising programme known in the past under the name AdWords which was also used by a different waste disposal company. The plaintiff found out that when it entered the expression ‘Alba Recycling’ on www.google.de, the webpage showed the AdWords advertisement of this recycling company with the wording ‘Alba Recycling collection – we disposal cheaply for you’ placed above the search results.
After the plaintiff sent a complaint to the defendant claiming the infringement of its trademark, the defendant deleted the advertisement. Subsequently, the plaintiff requested that the defendant provide information regarding the time of the placement of the advertisement on Google (prayer for relief A), the number of views of the webpage through the advertisement (prayer for relief B) and information regarding the prices which the waste disposal company paid for the advertisements (prayer for relief C).
The Landgericht Berlin (hereinafter ‘the Court of First Instance’) as the court seised under Article 7(2) of the Brussels I Regulation (recast) (1) upheld the action to the whole extent.
Based on the appeal of the defendant, the Kammergericht Berlin (hereinafter ‘the Court of Appeal’) dismissed the prayers for relief B and C.
Both parties filed a revision with the Bundesgerichtshof (hereinafter ‘the Supreme Court’).
Article 19(1) of the MarkenG (2) provides for an entitlement to receive information about the origin and distribution channels of goods or services with unlawful designation. However, the claims asserted by the plaintiff did not correspond to the information foreseen in the MarkenG as Article 19(3) expressly stipulates the kind of information which may be demanded.
The Court of Appeal was also correct to state that in the assessment of the prayers for relief B and C, any claims of the plaintiff under Article 242 of the BGB were to be excluded because of the absence of any special legal relationship between the plaintiff and the defendant.
Based on the revision of the defendant, the Supreme Court the judgment of the Court of Appeal, partially changed the decision of the Court of First Instance and dismissed the action.
(1) Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.
(2) Gesetz vom 25. Oktober 1994 über den Schutz von Marken und sonstigen Kennzeichen (German Act on the Protection of Trade Marks and other Signs from 25 October 1994).