With its ruling, which may have an impact on search engine advertising as a whole, Germany’s supreme civil court has now dismissed an appeal by online retailer Amazon. The market leader in German eCommerce had placed search engine adverts on Google, using the Ortlieb brand to guide potential buyers to products from various manufacturers on its own platform. Ortlieb – a medium-sized sports goods manufacturer from the Nuremberg region, known for its waterproof bicycle bags – successfully took action against this abuse of its brand with the help of specialists from the Berlin law firm Lubberger Lehment.
In the case that was now decided by the court (case no. I ZR 29/18), Amazon advertised on Google with adverts for keywords such as „Ortlieb Fahrradtasche“ (Ortlieb bicycle bag) or „Ortlieb Outlet“. However, the advertisements lead to mixed offer lists on Amazon.de – they showed not only Ortlieb products but also products from other manufacturers, without marking them. This is misleading for the customers: As the advertisement was designed with the keyword Ortlieb, they expect to find Ortlieb products and not an assortment of different manufacturers.
SME successfully defends itself against Amazon
The court decision is an important success for Ortlieb, after a first case about Amazon-internal result lists was not successful. “With the ruling, Ortlieb protects its sales and its customers from misleading online advertising,” comments Martin Fiebig of the Lubberger Lehment law firm, which represented the manufacturer in the legal dispute. Fiebig adds: “The judgement clearly shows that as owner of the intellectual property rights you can defend your brand and its guiding function for the consumer – at least in such cases of misleading AdWords linking.”
“The judgement clearly shows that as owner of the intellectual property rights you can defend your brand and its guiding function for the consumer.”
– Martin Fiebig, Lubberger Lehment
Ortlieb deliberately does not supply products to Amazon, and even authorized Ortlieb dealers are not allowed to sell to Amazon. Instead, the manufacturer from Heilsbronn in Franconia focuses on selective distribution via specialist dealers, which can offer their customers individual consulting. “We supply high-quality products and want our customers to be satisfied in the long term. That doesn’t fit with the trading model of marketplaces like Amazon”, explains Martin Esslinger, Head of Sales at Ortlieb.
“We are concerned with the future of our company, our business model, and our employees – so we are very pleased that we were able to win the case against Amazon,” says Esslinger. Prior to this, Ortlieb had already been largely successful in the previous instances at the Munich Regional Court (case no. 17 HK O 22589/15) and the Munich Higher Regional Court (case no. 29 U 486/17); the Lubberger Lehment law firm handled the case through all instances.
Protecting one’s brand remains a key challenge for companies
The steady increase in online advertising highlights the importance of online brand protection for businesses. According to a forecast by Emarketer, a market research subsidiary of Axel Springer, companies worldwide will again significantly increase their expenditures for online advertising in 2019 – for the first time, every other dollar will then be spent on digital advertising.
The law firm Lubberger Lehment offers comprehensive expertise in defending trademark rights and in selective distribution. The specialists have achieved several notable court successes recently – for example only a few weeks ago, in June 2019, with a court ruling against Amazon on the burden of proof for grey market imports (Berlin Court of Appeal, case no. 5 U 1/18). Also, Lubberger Lehment has achieved important successes in the fight against trade in counterfeits; for example, in a landmark decision by the German Federal Court of Justice (Bundesgerichtshof, BGH) and the European Court of Justice (EuGH), which at the end of 2015 imposed an obligation on German banks to provide information on the identity of suspected counterfeiters in case of apparent trademark right infringements (case no. I ZR 51/12).