Can Amazon view alternative products in search?

The I.E. Civil Senate of the Federal Court of Justice, which is responsible for trademark law, among other things, has to decide whether an internet trading platform may use a trademark in advertisements in the context of a Google search, if the offer list linked to the ad is not only products of this brand, but also third-party products.

Sachverhalt:

The applicant is the manufacturer of waterproof bags and transport containers which it markets under the name Ortlieb. It relies on an exclusive licence on the German word mark ‘ORTLIEB’, which claims protection for bags for sport and leisure, among other things.

The defendants are companies of the Amazon group. The defendant of 1 is responsible for the technical operation of the website www.amazon.de. The defendant of 2 is a seller on this website and appears under the seller’s name “Amazon”.

The applicant objects to the fact that, when entering the search terms ‘Ortlieb bicycle bag’, ‘Ortlieb luggage bag’ and ‘Ortlieb Outlet’, advertisements appear in the Google search function using the sign ‘Ortlieb’, which appear with quotation lists on www.amazon.de in which, in addition to Ortlieb products, products from other manufacturers also appear. The applicant itself does not offer its products through the ‘amazon.de platform’. It considers that the advertisements linked to mixed lists of quotations are in breach of the right to the trade mark ‘ORTLIEB’ and claims the defendants for injunctive relief and reimbursement of pre-judicial costs.

Previous process history:

The district court upheld the action. The defendant’s appeal has been largely unsuccessful. The Court of Appeal held that the plaintiff was standing against the defendants in accordance with Paragraph 14(14) of the Court of Appeal. 2 No. 1, para. 5 Trademark G* injunctive relief. The defendants had used the sign ‘ORTLIEB’. Exhaustion in accordance with Section 24 para. 1 MarkenG** occurred only to the extent that the advertisements related to Ortlieb products. The trade mark’s origin-indicating function is affected by the presentation of products from other manufacturers as a “hit” to the expected offers of Ortlieb products. Due to the specific design of the advertisements, the traffic referred to expectthat, when clicked, it would only be shown suitable offers of the Ortlieb products advertised there. By linking to offers from products from other manufacturers, the defendants took advantage of the pilot function of the brand.

With their appeal, which has been approved by the Federal Court of Justice, the defendants continue to pursue their claims.