On July 25, 2019, the First Civil Senate of the Federal Court of Justice, which is responsible, among other things, for trademark law, ruled that a trademark owner may object to the use of their trademark in an advertisement displayed after a Google search if the advertisement's specific design is misleading and customers are thereby directed (also) to offers of third-party products by exploiting the trademark's advertising impact.
Facts of the case:
The plaintiff manufactures waterproof bags and transport containers, which it markets under the designation Ortlieb. It holds an exclusive license for the German word mark "ORTLIEB," which claims protection for, among other things, bags for sports and leisure.
The defendants are companies within the Amazon group. Defendant 1 is responsible for the technical operation of the website www.amazon.de. Defendant 2 is a seller on this website and operates under the seller name "Amazon."
The plaintiff objects to the display of advertisements, booked by the defendants, that appeared when the search terms "Ortlieb Fahrradtasche," "Ortlieb Gepäcktasche," and "Ortlieb Outlet" were entered into the Google search function. These advertisements included the phrases "Ortlieb Fahrradtasche," "Ortlieb Fahrradtasche Zubehör," "Lenkertasche Fahrrad Ortlieb," and "Ortlieb Gepäcktaschen," and were linked to product listings on www.amazon.de that featured products from other manufacturers alongside Ortlieb products. The plaintiff does not distribute its products through the "amazon.de" platform. It views the advertisements linked to these mixed product listings as an infringement of the "ORTLIEB" trademark rights and seeks an injunction and reimbursement of pre-litigation costs from the defendants.
Previous course of proceedings:
The District Court ruled in favor of the plaintiff. The defendants' appeal was largely unsuccessful. The appellate court determined that the plaintiff was entitled to an injunction against the defendants pursuant to Section 14 (2) No. 1, (5) of the German Trademark Act (MarkenG). It found that Defendant 1 had used the "ORTLIEB" mark. The court further held that the origin-indicating function of the trademark was impaired by presenting products from other manufacturers as "hits" alongside the expected Ortlieb product offerings. Exhaustion, as per Section 24 (1) MarkenG**, was deemed to have occurred only to the extent that the advertisements pertained to Ortlieb products. Defendant 2 was held liable under Section 14 (7) MarkenG* for the trademark infringement committed by Defendant 1.
Decision of the Federal Court of Justice:
The Federal Court of Justice dismissed the defendants' appeal. The appellate court correctly found that the plaintiff is entitled to prohibit the defendants from using the "ORTLIEB" trademark in the contested advertisements, as the specific use is misleading.
Generally, the fact that a retailer offers competing products alongside those of the brand manufacturer does not preclude the use of the trademark in advertising for this product range, provided that the legitimate interests of the trademark owner are preserved. However, if a trademark is used misleadingly in advertisements following a Google search due to the specific design of the advertisement, such that customers are directed (also) to offers of third-party products through the exploited advertising effect of the trademark, the trademark owner can oppose this use of the trademark.
This was the case in the proceedings now decided by the Federal Court of Justice decided by the Federal Court of Justice: According to the findings of the Court of Appeal, which were not which were not objectionable under the law of review, the public expects to be offered offers of the products advertised in the ads at issue - among other things, bicycle products advertised there - including bicycle bags, handlebar bags and panniers - from Ortlieb are shown. The design of the advertisements does not give the reason to assume that he is presented with an overview of offers, in which without separate identification next to Ortlieb products of equal rank to offers other manufacturers are included. The abbreviated addresses of the Internet pages under the text of the announcements - e.g. www. amazon.de/ortlieb+fahrradtasche - rather suggests that this link leads to a compilation of offers on the website on the web page www.amazon.de, which the criteria specified, thus (alone) to products of the mark Ortlieb. Since customers, according to the findings of the Court of Appeal, expect to find expect to find offers that specifically match the advertisement, but are actually led to are led to lists of offers which also contain products from other manufacturers, the trademark is used in a misleading manner in the disputed advertisements. This use of the of the trademark can be opposed by the plaintiff.
Defendant 2 is liable under Section 14 (7) of the German Trademark Act (MarkenG) for the trademark infringement committed by Defendant 1, insofar as Defendant 2 itself offers third-party products on the websites linked by the misleading advertisements.
Judgment of the Federal Court of Justice of July 25, 2019 – I ZR 29/18
Lower Courts:
Munich Regional Court – Judgment of January 12, 2017 – 17 HK O 22589/15
Munich Higher Regional Court – Judgment of January 11, 2018 – 29 U 486/17 – GRUR-RR 2018, 151
Source: Press Release of the Federal Court of Justice of July 25, 2019
