WIPR Leaders 2019: Germany Trademarks Practice Update
Case law
In Ortlieb, the Federal Court of Justice (Supreme Court) differentiated four different sets of facts:
(1) The operator of an online shop with an internal search engine for products offered on his website, who saves trademarks as keywords for the searches performed in his own search engine, “uses” these trademarks within the meaning of the EU Trademark Directive.
(2) The operator of an online marketplace platform (such as eBay) enabling third party vendors who offer goods on his platform to choose for themselves different keywords for the platform’s search engine does not himself use the trademarks that correspond with the keywords; it is rather the third party vendor who uses the trademark in the context of its own commercial communication.
(3) However, the operator of a search engine, who does not himself offer or sell goods, but offers to book keywords for internet searches, also does not “use” the keywords. Rather, the trademarks are used by the businesses selling the goods who book the keywords for the internet searches.
The same rule applies if operators of online marketplaces book such keywords in order to advertise goods offered by third party vendors on the marketplace platform.
(4) The same rule as described under (3) above applies if the operator of a web page for auctions influences the results of an internet search engine by programming his own website in a way that keywords used for the searches are automatically included in the source code of his web page so that this page is being considered by the search engines.
The Ortlieb case
The three defendants were different Amazon companies domiciled in Luxembourg, including the company responsible for operating the Amazon.de website.
Amazon.de allows users to conduct internal searches for products available on this site. The Amazon.de website operator chooses the keywords for searches and couples them with certain products and offers by different vendors. The Supreme Court evaluates this activity by the Amazon company operating the website as “use” of the keywords as trademarks by this company. The Court of Appeal had ruled that this “use” constituted trademark infringement.
However, the Supreme Court held that use of the keyword Ortlieb as a trademark does not automatically constitute use that “interferes” with the functions of the trademark. The same standard test used for infringements in cases of keyword advertising (such as Google AdWords), that was established by the CJEU in Interflora v M&S Interflora, must also be used here.
So there is a two-step test: (1) does the normal internet user know that the advertiser and the trademark owner are competitors?; and (2) if the answer to (1) is no: is the user able, based on the concrete design of the advertisement, to determine that the goods offered in the ad do not originate from the trademark owner?
The Supreme Court remitted the case back to the Court of Appeal. In the new proceedings, it is decisive whether the normal internet user is able to recognise that products which appear in Amazon’s search results for the Ortlieb keyword, but which objectively do not originate from the trademark owner, do not necessarily originate from the trademark owner.
The court says that the requirements to separate original products from the alternatives are lower for internal search engines than for general search engines like Google.
The GoFit case
This case concerns whether the use of trademarks in an autocomplete function of an internal search engine on Amazon.de is trademark infringement. The court confirms that automatic autocomplete search term suggestions (which include the trademark) are trademark “use”.
It also confirms that Amazon.de uses the trademark, since it caused the technology to choose the search terms based on an evaluation of prior use of the terms by the website’s users. However, the court held that the use did not unlawfully impair the function of this trademark to indicate the origin of the products.
Jens Künzel is a partner at Krieger Mes & Graf v der Groeben. He can be contacted at: jens.kuenzel@krieger-mes.de
