The first case: Do you sell your branded products, like Ortlieb, on Amazon’s German online marketplace? And have you ever noticed that a multitude of third-party products appear there when you enter your brand and search for its products?
You may be annoyed about this and feel that this is an infringement of your brand, which you have built up with great effort, want to use exclusively and which should not be used in association with competitive offers.
However, you cannot hold your competitor responsible for this, because they have not initiated the linking of their offers with your brand. The links are in fact created automatically by the algorithm of Amazon’s search engine.
Amazon, however, has programmed the algorithm. Could you therefore accuse Amazon of trade mark infringement?
This would perhaps be the case if Amazon had consciously and intentionally chosen to associate your brand with your competitors in order to advertise its customers’ offers. However, you cannot assume this here. The search engine’s algorithm has automatically compiled the hit list using customer behaviour, hence the issue of trade mark infringement is ruled out. By evaluating customer behaviour (e.g. purchase rate, click rate, conversion rate), the search engine compiles all offers matching the search query without distinction.
However, trade mark infringement would need to be considered if the potential purchaser, when entering your trade mark in the search engine, expected all listed offers to have originated from your business operations alone. The purchaser knows, however, that the hit list with the offers originates from a search engine in an online shop and not from a general search engine. They are also aware that the online shop operator cannot always offer all the goods that are in demand, but is in fact anxious to sell as many goods as possible. In the absence of any particular indications to the contrary, the purchaser will therefore assume that alternatives to certain search queries are also being offered to them in the hit list of an online shop. Based on this concept, they will therefore distinguish your branded products from those of your competitors.
It therefore depended on whether the customer expected to be shown only offers for your products. In the Ortlieb case, the Federal Court of Justice doubted this, but referred the case back for further examination and clarification, BGH – Ortlieb, judgment of 15 February 2018.
So you must ask yourself whether the potential purchaser has reason to think differently in your case and whether they expect, when they enter your brand in the search engine of the online shop, only your branded products to be displayed. In 2018, the German Federal Court of Justice (BGH) questioned whether a corresponding customer expectation existed in the case that was decided, but referred the matter back for further examination and clarification
The second case: The second dispute against Amazon, which was decided in favour of Ortlieb, shows how finely the case law analyses Internet ads. Amazon had booked the Adword ‘Ortlieb’ on Google. In the ad, which appeared when the search terms ‘Ortlieb Fahrradtasche’ were entered into Google’s search engine, Amazon used the link ‘www.amazon.de/ortlieb+Fahrradtasche’.
Due to this link the consumer expected with Amazon however only offers of Ortlieb. In fact the Amazon website in question also contained competing offers. Ortlieb didn’t have to tolerate this, BGH – Ortlieb II, judgement of 25.07.2019.
Learnings: If your product brand is entered into the search engine of an online shop and competing offers also appear in the hit list, you must check whether the customer expects your product exclusively to be listed. If the customer only expects offers for your branded products, there is a trademark infringement.