Decision of the Federal Supreme Court of July 25, 2019 – I ZR 29/18
The company ORTLIEB attacks advertisements appearing when entering the search terms „Ortlieb bicycle bag“, „Ortlieb luggage bag“ or „Ortlieb outlet“ in Google linking to an Amazon offer overview and forwarding to offers of competitors.
The Federal Supreme Court confirmed trademark infringement because the advertisements were misleading due to its concrete design and the customers were forwarded to offers of competing products.
The 1st Senate of the Federal Supreme Court emphasised that the concrete design of the advertisements is of decisive importance. In principle, the use of the trademark in advertisements is not to be objected to, if retailers offer competing products beside the trademark owner products, provided that the legitimate interests of the trademark owner are safeguarded. It is questionable as to whether it is recognisable to customers from the advertisement itself that the products offered in the advertisement originate not only from the trademark owner but also from other companies (see judgment of the European Court of Justice of 23 October 2010 in Case C-236/08 Google v Google France).
The function of indicating origin is affected if the concrete design of the advertisements makes it difficult or impossible for a normally informed and reasonably attentive internet user to recognise whether the advertised product originates from the trademark owner or from a third party.
In the present case, the function of indicating origin is affected because the relevant public, when clicking on the advertisements, expected the products advertised there, namely bicycle bags from ORTLIEB, to be displayed to them. Due to the design of the advertisement, the relevant public had no reason to assume that the offers are not from the trademark owner. The abbreviated domain addresses e.g. www.amazon.de/ortlieb+fahrradtasche under the text of the advertisements rather led to the fact that the relevant public could assume that only offers from ORTLIEB were offered on Amazon.
ORTLIEB was able to successfully resist this use.
Conclusion: It is therefore worth taking action against the exploitation of one’s own trademark as lure to competitor products.