In the decision of the German Federal Court of Justice: "Ortlieb II" from 25 July 2019 (docket no. I ZR 29/18) the bicycle bag manufacturer Ortlieb prevailed against Amazon in contrast to the "Ortlieb I" decision prohibiting Amazon from using ads on Google with a misleading use of its trademarks, namely the brand name “Ortlieb”.
Even though Amazon may place ads for third party products within an Amazon search query, the same procedure within a Google search query as a linked ad to www.amazon.de is a trademark infringement according to the recent decision.
In the decision of the German Federal Court of Justice "Ortlieb II" from 25 July 2019 (docket no. I ZR 29/18) the bicycle bag manufacturer Ortlieb prevailed against Amazon in contrast to the "Ortlieb I" decision prohibiting Amazon from using ads on Google with a misleading use of its trademarks, namely the brand name “Ortlieb”.
When an Internet user searches within the Google search engine for the term "Ortlieb bicycle bag", a link from Amazon appears “www.amazon.de/ortlieb+bicyclebag”. When the Internet user clicks on the suggested link, however, not only Ortlieb bicycle bags appear on the Amazon website, but also products from other manufacturers. This is the case, even if the current wording of the link states that only Ortlieb bags should appear as search results. Thus, there are no indications for the internet user to recognize that the search results contain products from brands other than the requested ones. The internet user usually does not expect to receive divergent search results other than his specifically formulated search query in the case of a neutral search engine query on Google. Therefore, the Court ruled that this is a violation of the origin-indicating function of the “Ortlieb” trademark, as its trademark attraction is exploited to (also) offer other products to the consumer.
In contrast the Court stated in the previous “Ortlieb I” decision that there is no trademark infringement, when an internet user searches within an Amazon search query directly for Ortlieb products and the search results include products from other manufactures as well. This is the case, because the user searching on an online marketplace like Amazon usually expects to get offers not limited to the requested brand but also from competitors listed in the marketplaces inventory. It is common knowledge and expected for products of different manufacturers to be offered on online marketplaces. Thus, the user will be more aware of the varying manufacturers and can differentiate easier between products of the brand owner and products of third parties. Therefore, internet users expect to be offered bicycle bags from other manufacturers when they search for "Ortlieb bicycle bags".
In summary, the Federal Court of Justice justified the different outcome with different customer expectations. In the courts opinion search queries within a search engine (Google) must meet higher requirements as regards the separation of search results and advertisements than a search query within an internet marketplace (Amazon).
It is therefore not sufficient if a web address like http://www.amazon.de/ortlieb+bicyclebag appears after a search query on Google, which has no indication that products from other manufacturers than the ones requested were offered there. Such advertisements are to be omitted. Those ads would only be permissible if the Internet user solely finds the requested products or the specific design of the ad/web address itself gives any indication of offers from other manufacturers.
Ultimately, the decision of the Federal Court of Justice strengthens Ortlieb's own sales strategy of selling through a selective distribution system and not on Amazon. It encourages the trademark protection far beyond the concrete case.
In the future, all online shops that offer products from several manufacturers must ensure that if they advertise for those products by using only a specific manufacturer’s trademark on Google, only products of this manufacturer are offered on the page linked in the offer - otherwise they would risk being sued for trademark infringement.
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