The First Civil Senate of the Federal Court of Justice, which is responsible inter alia for trade mark law, ruled on 25 July 2019 that a trade mark owner can oppose the use of its trade mark in an advertisement following a Google search if the advertisement is misleading due to its specific design and customers are (also) led to the offer of third-party products due to the advertising effect of the trade mark exploited in this way.
Facts:
The plaintiff is a manufacturer of waterproof bags and transport containers, which it markets under the name Ortlieb. It is the holder of an exclusive licence to the German word mark "ORTLIEB", which claims, inter alia, protection for bags for sport and leisure. leisure bags.
The defendants are companies of the Amazon group. The 1st defendant is responsible for the technical operation of the website www.amazon.de. The 2nd defendant is the seller on this website and appears under the seller's name "Amazon".
The plaintiff objects to the fact that when entering the search terms the search terms "Ortlieb bicycle bag", "Ortlieb pannier luggage bag" and "Ortlieb Outlet" into the Google search function ads booked by the defendants appeared containing the words "Ortlieb bicycle bag", "Ortlieb bicycle bag accessories", "handlebar bag bicycle Ortlieb" and "Ortlieb panniers" and linked to lists of offers on linked to lists of offers on www.amazon.de which showed products from other manufacturers in addition to Ortlieb products. The plaintiff does not offer its products via the platform "amazon.de" platform. She sees the advertisements linked to mixed offer lists the right to the "ORTLIEB" trademark in the advertisements linked to the mixed and is suing the defendants for injunctive relief and reimbursement of pre-litigation costs. and reimbursement of pre-litigation costs.
Process history so far:
The district court upheld the action. The defendants' appeal was largely unsuccessful. The Court of Appeal held that the plaintiff was entitled to injunctive relief against the defendants pursuant to § 14 para. 2 No. 1, para. 5 MarkenG. The first defendant had used the sign "ORTLIEB". The trade mark's function of indicating origin was impaired by the presentation of products of other manufacturers as "hits" to the expected offers of Ortlieb products. Exhaustion pursuant to § 24 (1) MarkenG** only occurred insofar as the advertisements referred to Ortlieb products. The second defendant was liable under § 14(7) MarkenG* for the trade mark infringement committed by the first defendant.
Decision of the BGH:
The Federal Supreme Court dismissed the appeal of the defendant. dismissed. The Court of Appeal was correct in its conclusion that the plaintiff could prohibit the defendants from using the trade mark "ORTLIEB" in the use of the trade mark "ORTLIEB" in the objectionable advertisements, because the is misleading.
In principle, however, the fact that a trader also offers dealer also offers competing products in addition to the brand manufacturer's products, does not preclude the use of the trade mark in advertising for this range of products product range, provided that the legitimate interests of the trade mark proprietor are remain intact. However, if a trade mark is used in advertisements after a Google search due to the misleading due to the specific design of the advertisement, so that customers are the advertising effect of the trademark exploited in this way (also) leads them to the to the offer of third party products, the trademark owner can oppose this use of the trademark. the trade mark owner can oppose this use of the trade mark.
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.
The second defendant is liable under § 14 (7) Trademark Act for the trademark infringement committed by the first defendant insofar as it itself offers third-party products on the websites linked to the misleading advertisements.
Judgment of the Federal Supreme Court of 25 July 2019 - I ZR 29/18
Lower courts:
LG München - Judgment of 12 January 2017 - 17 HK O 22589/15
OLG Munich - Judgment of 11 January 2018 - 29 U 486/17 - GRUR-RR 2018, 151
Source: Press release of the Federal Supreme Court of 25.07.2019
