Germany: Bundesgerichtshof – Use of third-party trade marks in Amazon – autocomplete function and hit list
Everyone knows this and has probably been annoyed by it on one or the other occasion: You enter a word, maybe even just a few letters of a word into a search engine on the internet, e.g. the Amazon search engine. A list of potential words and trade marks to search for is displayed. You are pleased, if in fact the brand you want to search for is among them and you click on this term from the list. A certain disappointment is inevitable if a long hit list is displayed, but no product of the desired brand appears in it, but only competitors’ products. This raises the following questions:
May Amazon, in its autocomplete function, name brands that neither Amazon itself nor third parties sell via the Amazon platform? Does a hit list have to contain a clarification at the beginning if only competitors’ products are displayed instead of the searched brand products? When entering or selecting a particular brand on internet platforms such as Amazon, does the internet user expect to be offered only products of that brand?
These questions were subject of the decision of the Bundesgerichtshof (German Federal Court of Justice) on February 15, 2018 in the cases Ortlieb and goFit Gesundheit GmbH against Amazon. From a legal point of view, the question is to what extent Amazon infringes trade mark rights by
a) either completing the company name or the trade mark within the scope of an autocomplete function when the user enters a few letters in the Amazon search mask, or
b) after selecting a search term which contains a corresponding trade mark or company name, either offering competing products to the trade mark owner’s product in the hit list itself or have them offered by third parties.
What both proceedings had in common was that Amazon itself did not distribute any goods of the trade mark owners (at that time) and also that no goods of the trade mark owners were distributed by Amazon via third parties.
The reasons for the judgments have not yet been published, only a press release is available. The Bundesgerichtshof seems to assume in both cases, i.e. for the display of trade marks via an autocomplete function programmed and controlled by the platform operator or a company associated with it, and for the display of a hit list , which is based on a previously set search term according to an algorithm based on the search behaviour of other users, that the trade mark is used in its function as a trade mark (in order to sell products) in business transactions.
Even if the facts of the case deviate from the Adword cases already decided by the Bundesgerichtshof (BGH), the BGH seems to follow the reasoning behind those judgments for the Amazon case. Here, too, the question arises as to whether it is possible to presume that a normally informed and reasonably attentive internet user, on the basis of the generally known market features, has the knowledge that the advertiser (here Amazon) and the trade mark owner are not economically connected, but are in competition with each other. If such knowledge is lacking, as the Bundesgerichtshof assumes,
it is to be asked whether the internet user understands from the advertisement that the goods or services offered by the advertiser do not originate from the trade mark owner or from companies associated with it.
Based on the MOST praline decision of 2012, Adword advertising is subject to the requirements that it does not inflict with the trade mark’s function as regards the indication of origin. The court held that this is not the case, if
– the advertisement appears in a commercial block that is clearly separated from the hit list and marked accordingly, and
– contains neither the trade mark nor any other reference to the trade mark owner or the products offered under the trade mark in the advertisement.
An advertising block which is clearly separated from the search results in terms of colour or otherwise and which is additionally titled as an advertisement or a comparable term is sufficient as long as the trade mark itself does not appear in the advertising text and, in particular, no other circumstances are discernible which indicate that the internet user is establishing an economic connection between the advertiser and the trade mark owner for other reasons.
Such a link was assumed in the Fleurop case, ruled by the Bundesgerichtshof in 2013. This was due to the special character of Fleurop’s distribution system, where a large number of individual florists had connected to a distribution network and internet users could easily assume that the advertising company (at that time: Blumenbutler) was also a Fleurop partner company.
In this decision, the BGH also clearly pointed out once again that the spatial design of the advertising block is of great importance and in particular advertising blocks, which can appear directly in front of or behind a hit list are considered part of the hit list much faster due to their arrangement and therefore cannot be readily recognized as advertisement even by the average attentive and informed internet user.
If one transfers this thought of the BGH to the case Ortlieb versus Amazon, it explains why the court referred the case back to the appeal court with the question how the internet user understands the hit list presented in the proceedings and objected to by the plaintiff. It might also be decided whether Amazon in the future will have to place a notice in front of the hit list in the manner “Your search did not yield a hit. However, the following products may still be of interest to you”, as requested by the plaintiff.
The question of whether and in what form third-party trade marks may be used for internet advertising without the consent of the trade mark owner therefore remains a topical issue.
Contact person: Vanessa Lichter, German Attorney at Law