The German Federal Supreme Court (Bundesgerichtshof – BGH) confirmed in its decision of 25 July 2019 that the use of the ORTLIEB trade mark by Amazon in an advertisement was trade mark infringement since it linked to search results on amazon.de containing not only original ORTLIEB products, but also those of unconnected third parties.

Background

The German company Ortlieb is known for its outdoor gear, in particular waterproof bags. Online advertisements for Amazon used the ORTLIEB trade mark and included it in the link, such as “Ortlieb Fahrradtasche” (in English: “Ortlieb bicycle bag”) and the corresponding link “amazon.de/ortlieb+fahrradtasche”. The results shown after clicking on the link, however, were not limited to ORTLIEB products, but included products from other manufacturers.

The BGH decision

Ortlieb claimed trade mark infringement based on Sec. 14(1), (2) no. 1, (5), (7) of the German Trade Mark Act (Markengesetz – MarkenG), which was affirmed on first instance and appeal. The further appeal to the BGH by Amazon failed.

Imagine asking a store employee for specific products of a specific manufacturer and the employee showed you products from another manufacturer without warning. Would you be confused?

In its decision, the BGH stressed that a retailer is not prohibited from offering competing products, while advertising with the mark of just one particular manufacturer. However, things are different where the consumer is misled due to the layout of the specific advertisement. In the case at hand, the BGH saw the consumer confusion in the use of the link referring to ORTLIEB, such as “amazon.de/ortlieb+fahrradtasche”, coupled with the display of third party products. A consumer would not expect to be exposed to third party products under these circumstances.

Previous dispute

In 2018 the BGH decided on another claim for trade mark infringement brought by Ortlieb against Amazon. Back then, Ortlieb’s claim was based on the fact that the search for “Ortlieb” on amazon.de showed third party products in the search results. The BGH decided that this could be considered infringing if it was not easily recognizable for the consumer that the products were from a third party, and referred the case back to the appeal court. In June 2019, the Appeal Court of Munich decided in favour of Amazon.

Given Ortlieb’s recent win, it would not be surprising for Ortlieb to go into a third round against Amazon. In any event, the previous cases have helped shape and provide valuable guidance on online advertising and the use of search algorithms.

In short

This case serves as a reminder that the question of consumer confusion is intertwined with consumer expectation – and what a consumer can reasonably expect will always depend on the facts of the individual case.