The Regional Court of Berlin II recently handed down judgment in a matter involving search engines, generative AI and ‘dupe’ perfumes. The claimant alleged trade mark infringement after it was found that the defendant’s newly-introduced generative AI search function, as part of its search engine, was assisting users to produce comparison lists containing branded scents and similar ‘dupe’ scents. These lists also contained links and preview images, occasionally even sponsored products.
While the court initially considered international jurisdiction under the EU Trade Mark Regulation (EUTMR), it was found that since the search results were directed only at users in Germany, the court did not have jurisdiction to issue an EU-wide injunction. The main substantive point of contention was whether the AI search engine had actually used the claimant’s registered trade marks within the meaning of Article 9 EUTMR in producing its results. The court held that since the defendant had merely created conditions that would allow for a user of its search engine to use a sign, and had not actually actively conducted trade mark use under Article 9, nor did the results constitute the defendant’s own commercial communications, therefore the application for interim relief was dismissed.
Furthermore, the court held that the function of a search engine, whether AI-assisted or not, was to draw together information from elsewhere and not from the search engine provider’s own content. Since the information provided was derived from existing internet content, and not of the defendant’s information, then any use of a trade mark was subsequently from a third party and not the defendant itself.
The implications of this decision remain to be seen. Though in jurisdictional terms it is limited to Germany, it will no doubt be discussed in relation to future disputes involving AI search functions and the liability of the operators of the same.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
