Tenor:
- On appeal by the defendant, the judgment of the 10th Chamber for Commercial Matters of the Regional Court of Frankfurt am Main of 17.11.2017, ref.
3-10 O 18/17 is amended.
The action is dismissed. - The plaintiff is ordered to pay the costs.
- The judgment is provisionally enforceable without the provision of security.
The plaintiff may avert the defendant’s enforcement by providing security in the amount of 110% of the amount enforceable on the basis of the judgment, unless the defendant provides security in the amount of 110% of the amount to be enforced in each case prior to enforcement.
Reasons
I.
The parties are in dispute about the admissibility of the display of competitor products in the hit list of the search mask of the website www.(…).de when entering the trademark-protected designation “A”.
The plaintiff is the owner of the German word mark “A” with the registration number …, which is registered, inter alia, in product class 20 for “floating inflatable seating furniture”. Defendant 1.) is the seller of the products labeled “Sale and shipping by …” on www.(…).de; defendant 3.) is responsible for the sales platform at www.(…).de; defendant 2.) is responsible for the technical operation of the website www.(…).de.
The plaintiff’s action, based on trademark law and, in the alternative, on competition law, seeks an injunction and compensation for the costs of the warning letter against the presentation of the search results list on the website www.(…).de when the search term is entered in the search field of the internal search engine. The list of results shows the plaintiff’s product as the first hit and competitor products as further hits. With regard to the individual design of the results page, reference is made to Annex HPR 5 and, with regard to the factual findings pursuant to Section 540 ZPO, to the contested judgment of the Regional Court of Frankfurt am Main of November 17, 2017, by which the defendants were ordered to cease and desist and to reimburse the costs of the warning.
The Regional Court stated that the defendants had used the disputed sign by influencing the results of their internal search engine in such a way that offers of third-party products also appear as a result of the selection process when the sign is entered. The defendants could also not successfully argue that use was not made by them, as the trademark was entered by the user and the output of the search result was only the result of an algorithm. This algorithm is specified by the defendants. The defendants had also used the sign as a trademark. The use of an internal search engine of a sales intermediary constitutes trade mark use of a sign if the sign is used to draw the customer’s attention to the goods or services of a third-party provider. If the internet user enters the name of a company’s product as a search term, then he expects information or offers on this specific product. If the product name is then repeated below the input field, the public understands this sign in such a way that a search query has produced the offers listed on the search screen below as a result for the requested product names, i.e. that the branded products shown below are available from the defendants. If the list of natural results displayed links to other websites on which products of a competitor of this company were displayed, the internet user could also associate the links with the product he was searching for, which would impair the origin function of the trademark. The case law of the Federal Court of Justice on so-called keyword advertising cases was not applicable in the present case, as the display of the third-party products was, according to the defendant’s submission, not attributable to the behavior of the third-party providers, but to an evaluation of customer behavior by the defendant itself. Moreover, in contrast to the user of an external search engine, the user of an internal search engine is not accustomed to receiving advertisements or offers from third parties in addition to genuine hits.
The defendants’ appeals are directed against this, with which they continue to pursue their first-instance motions to dismiss.
Contrary to the opinion of the Regional Court, a different public perception should be assumed. When entering a search term on sales portals on the Internet, the public is accustomed to the fact that products from third-party suppliers are also displayed when a certain character is entered in the search bar of the website. Therefore, when entering this specific term, he expects to receive not only hits for the search term he has entered, but also other hits that may be relevant to his purchase. It was also clear to him that all of the results displayed in the hit list were ultimately advertising, as the aim was precisely to sell these products. The public would therefore pay particular attention to the hits displayed. According to the criteria established by the Federal Court of Justice in the “Ortlieb” decision, the competitor products in particular are also clearly and unambiguously provided with deviating designations, so that the Internet user can easily recognize whether the deviating product comes from the trademark owner or a third party.
The defendants request,
the judgment of the 10th Chamber for Commercial Matters of the Regional Court of Frankfurt am Main of 17.11.2017, ref. 3-10 O 18 / 17, and to dismiss the action in its entirety.
The applicant claims that the Court should,
dismiss the appeal.
She defends the challenged judgment.
With regard to the further submissions of the parties, reference is made to the exchanged written submissions and their annexes.
II.
The admissible appeal is successful on the merits. The plaintiff is entitled to the injunctive relief asserted under § 14 para. 2, para. 5 MarkenG, as the defendants have not used the plaintiff’s sign as a trademark on their website when designing the search algorithm in accordance with Annex HPR 5 and therefore the trademark’s function of origin is not impaired; there is also no apparent impairment of other trademark functions.
1. the double-identical use of the sign “A” by the defendants does not infringe the rights of the plaintiff arising from the plaintiff’s trademark. There is neither an impairment of the origin function of the plaintiff’s trademark nor is an impairment of other trademark functions recognizable.
a) According to the case law of the ECJ, the assessment of whether the origin function of a trade mark is impaired when internet users are shown an advertisement of a third party using a keyword identical or similar to the trade mark requires a two-step examination: First, the court must determine whether a reasonably well-informed and reasonably observant internet user can be assumed to know, on the basis of generally known market characteristics, that the advertiser and the trade mark proprietor are not economically connected but are in competition with each other. In the absence of such general knowledge, the court must then determine whether it is apparent to the internet user from the advertisement that the goods or services offered by the advertiser do not originate from the trade mark proprietor or from undertakings economically associated with it (see ECJ, GRUR 2011, 1124 para. 51 – Interflora/M&S Interflora Inc). This assessment depends on the design of the advertisement. If it is difficult or impossible for a reasonably well-informed and reasonably attentive internet user to determine from the advertisement whether the goods or services advertised originate from the proprietor of the trade mark or from an undertaking economically linked to it or rather from a third party, the trade mark’s function of indicating origin is impaired. Whether, according to these principles, there is or may be an impairment of the function of indicating origin is a matter for the national court to assess (ECJ, GRUR 2010, 445 [ECJ 23.03.2010 – Case C-236/08; Case C-237/08; Case C-238/08] para. 82-88 – Google France and Google; GRUR 2010, 451 [ECJ 25.03.2010 – Case C-278/08] para. 35, 37 – BergSpechte/trekking.at Reisen; GRUR 2010, 641 [BGH 14.01.2010 – I ZB 32/09] para. 24 f. – Eis.de/BBY; GRUR 2010, 841 [ECJ 08.07.2010 – Case C-558/08] para. 34, 36 – Portakabin/Primakabin; GRUR 2011, 1124 para. 44, 46 – Interflora/M&S Interflora Inc).
b) These principles on keyword advertising developed by the ECJ also apply if – as here – the display of the third-party products is not attributable to the behavior of the third-party providers, but to the evaluation of customer behavior by the defendant. (BGH GRUR 2018, 924, marginal no. 46 – Ortlieb). The principles of keyword advertising apply to the party who operates the keyword advertising by selecting the keyword, regardless of whether this is the provider of the goods, the operator of the website or the operator of the search engine. According to the case law of the BGH, the transfer of the principles of keyword advertising is not precluded by the fact that the list of results to be assessed in the dispute does not differentiate between hits that actually match the search query and other advertisements that only appear on the occasion of the search. Just as in the keyword advertising cases decided to date, the dispute concerns advertisements triggered by a search term. The fact that no distinction is made in the hit list between the natural hits and the advertisements for offers from other manufacturers is the only relevant factor in answering the question of whether the trade mark’s function as an indication of origin can be assumed to be impaired.
c) When applying the principles of keyword advertising as required, an average Internet user can easily recognize that the goods advertised in the list of results in question here do not originate from the owner of the “A” trademark or a company economically associated with it, but rather from third parties.
(1) According to the case law of the Federal Court of Justice on keyword advertising, a reasonable Internet user, after carrying out a search using a trademark word with the help of an Internet search engine, does not expect to find exclusively offers from the trademark owner or its affiliated companies in an advertising block that is clearly separated from the hit list in terms of space, color or in another way and marked with the term “ads”. The public, which is familiar with the separation of advertising from the actually requested service from the area of press and broadcasting, distinguishes between the locations in the hit list and the advertisements marked as such. They are aware that a necessary condition for the appearance of the advertisement is, above all, its payment by the advertiser. He is also aware that third parties also regularly place paid advertisements with the operator of an Internet search engine. He therefore has no reason to assume that an adword ad appearing in the ad column when a trademark is entered as a search term indicates solely the offer of the trademark owner or a company economically associated with it (BGH, GRUR 2011, GRUR 2011, 828 [BGH 13.01.2011 – I ZR 125/07] para. 28 – Bananabay II; BGH GRUR 2013, GRUR Jahr 2013, 290 para. 27 – MOST chocolates).
(2) However, it cannot be concluded from this that there is always an impairment of the function of the trademark as an indication of origin if advertisements with products that do not originate from the owner of the trademark used as a search term do not appear in an advertising block that is clearly separate from the hit list and marked accordingly, but are part of the hit list. The decisive factor is whether it is difficult or impossible for an average Internet user to recognize whether the advertisements contained in the hit list originate from the owner of the trademark or an economically affiliated company or rather from a third party. Taking into account the expectations of Internet users of a pure search engine, higher requirements must be placed on the separation of search results and advertisements than on a search engine operated in an online store or on an Internet marketplace, where the average Internet user expects alternatives to be offered in the hit list (BGH loc. cit. – Ortlieb).
(3) The understanding of traffic is decisively influenced by previous knowledge and experience in the use of internal search engines. The user knows from experience that the lists of hits generated by internal search engines do not always show only matching hits. It is therefore usually not difficult for them to distinguish between products of the trademark owner and products of third parties; they are aware that other “matching” results are also offered when a search term is entered due to the algorithmic search. This understanding of the public, which is also indicated by the Federal Court of Justice, raises the question of whether there was still an impairment of the function of origin, at least initially, i.e. whether, over time, only a habituation to trademark-infringing practices of sales platforms has occurred – the consideration of which could be questionable for normative reasons (Thiering, GRUR 2018, 1185). However, trademark law also recognizes in other areas that changes in public understanding can lead to a loss of rights for the trademark owner or a restriction on the enforcement of its trademark right, e.g. in the case of the “” of the trademark, in which a trademark loses its distinctive character because it is equated with a generic name in the trade due to its outstanding reputation (see Section 49 II No. 1 MarkenG).
(4) Against this background of experience, the public therefore recognizes that in all search results under the prominent heading describing the product a line is introduced with “from …”. They recognize that different names such as X or Y appear at this point. Since the seller is located elsewhere, he will only assign this to the manufacturer and recognize an indication of origin there. The public therefore has no reason to assume that – contrary to its expectations when searching – there are economic relationships between the trade mark proprietor and all (!) other sellers (see also the large number of results: BeckOK MarkenR/Mielke, 16th ed. 14.1.2019, MarkenG § 14, marginal no. 205). Insofar as the plaintiff counters that these are completely insignificant product names and provider identifiers, this is not convincing. The public expects a corresponding provider identification at this point; the necessary clarity results from the standardized reproduction exactly at the point below the product description.
(5) Nor does anything else apply because (exceptionally) it is not sufficiently clear from the presentation of the individual products in the hit list that they bear a third-party trademark. Such an exceptional situation does not exist here:
Insofar as the plaintiff has pointed out that the impairment of the function of origin is reinforced by the fact that the hit list in Annex HPR 5 even contains imitations of the “Y” mark that infringe design rights, it is irrelevant whether this assessment under design law can have any relevance at all for the question of the function of origin, since in any case the public – whose point of view is important – is not aware of the design law register situation and therefore cannot include it in its considerations that form the basis of its understanding. The sight of many similar-looking products from different manufacturers can just as well – or even more likely – be an indication that special legal protection does not exist. Something else may come into consideration if the design is so extraordinarily well-known that the public must necessarily draw the conclusion that there must be economic links between the suppliers. However, the plaintiff has not submitted such an extraordinary reputation here.
The “second brand” argument put forward by the plaintiff does not justify an exception in the sense described above either. The public may be aware that branded products are sometimes also sold under secondary brands. However, the public will not assume that the large number of search results are exclusively secondary brands of the plaintiff.
d) An impairment of other trademark functions is also out of the question.
(1) The realization of the facts of infringement under § 14 para. 2 nos. 1 and 2 MarkenG depends in principle on an impairment of the respective protected trademark functions. In addition to the traditional function of origin, the quality function as well as a communication, investment and advertising function are recognized according to the case law of the ECJ (GRUR 2009, 756).
(2) In its order for reference on keyword uses for the Google AdWords service, in which a deception of origin was remote due to the clear separation of the advertising block, the BGH had considered an impairment of the advertising function by weakening the advertising power of the trademark to be possible (BGH GRUR 2009, 498 [BGH 22.01.2009 – I ZR 125/07] – bananabay, para. 17 aE;), the ECJ, however, did not see the disadvantages of the trademark owner (higher own price-per-click in Google AdWords, lack of secure controllability of own position in AdWord ads) as an impairment of the advertising possibilities of the trademark owner, but only as effects, since the visibility of the trademark owner’s products remains guaranteed in view of the in any case uninfluenced and free result in the list of actual, natural search results (ECJ GRUR 2010, 445 [ECJ 23.03.2010 – Case C-236/08; Case C-237/08; Case C-238/08] – Google France and Google, para. 93-98; also ECJ GRUR 2010, 451 [ECJ 25.03.2010 – Case C-278/08] – BergSpechte, para. 33/34). With this argument, it should also be pointed out here that the plaintiff’s product could also be found in the search result – in a prominent position at the top of the results list (see also Senate, GRUR-RR 2018, 512, para. 12 – Birki).
(3) There is also no impairment of the investment function. The “investment function” means that a trade mark can be used by its proprietor to acquire or maintain a reputation capable of attracting and retaining consumers (ECJ, GRUR 2011, 1124 para. 60 – Interflora). It must be distinguished from the advertising function. The expenses that were necessary to acquire a reputation for the trademark are to be protected (Hacker in Ströbele/Hacker, MarkenG, 12th ed., Introductory para. 45). It is not necessary for the trademark to have a reputation. It is sufficient that it has already been put to use with the aim of binding consumers. However, it is necessary that the trademark owner has built up a special reputation with the trademark and that this reputation is at risk. It must be significantly more difficult for the trademark owner to use his trademark to acquire or maintain a reputation.
An impairment of the investment function could therefore only be considered if the trade mark proprietor wished to establish a certain brand image with the trade mark “A”, which clearly stands out from the image of other branded products, and thus address a special target group. However, nothing has been submitted in this regard. Insofar as the plaintiff wants to see an impairment of the investment function in the fact that it has created a completely new product category as a “pioneer” and can demonstrate a unique design, this is not suitable to impair the investment function. Firstly, the plaintiff is arguing here with regard to the product and not the brand. Design and functionality are not aspects that are protected by trademark law. The plaintiff has not shown that, beyond the reputation of the product – which, according to the plaintiff’s submission, represents a new genre – the plaintiff’s trademark has acquired a special reputation that goes beyond the function of origin.
(4) Finally, the warranty function of the trademark is not impaired. The quality or guarantee function is typically impaired by the marketing of modified or deteriorated original goods (cf. BGH, GRUR 2012, 392 [BGH 06.10.2011 – I ZR 6/10] para. 19 – Certificate of authenticity; BGH, GRUR 2005, 160, 161 – SIM-Lock). Such a case does not exist here. In principle, the quality function can also be impaired in other ways, for example by misrepresenting the quality of a branded product in advertising (Hacker in Ströbele/Hacker/Thiering, MarkenG, 12th ed.) However, the plaintiff has not submitted any such evidence here. Insofar as it refers to the higher quality of its products in comparison to the competing products, this alone is not suitable to justify an impairment of the guarantee function in addition to the – not relevant here – impairment of the origin function.
2) Insofar as the plaintiff has also based its action on Section 5 I No. 1 UWG under the aspect of deception about the commercial origin, the action is also unsuccessful in this respect. In the application of the provisions of unfair competition law for the protection against deception as to origin pursuant to Sec. § Section 5 I 2 No. 1 and II UWG, contradictions with trademark law must be avoided in individual cases. The trademark owner must not be granted a protective position under unfair competition law that he is not entitled to under trademark law (BGH loc. cit. – Ortlieb, para. 65; BGH, GRUR 2016, 965 [BGH 23.06.2016 – I ZR 241/14] para. 23 – Baumann II, mwN).
3) The decision on costs follows from Section 91 ZPO. The decision on provisional enforceability is based on sections 708 no. 10, 711 ZPO.
The requirements for an admission of the appeal are not met. The fundamental legal questions regarding the use of trademarks within a search function embedded in internet trading platforms have been clarified since the “Ortlieb” decision of the Federal Court of Justice. The Senate applied the criteria established there to the individual case at hand.
Insofar as the plaintiff has suggested an admission with regard to the question of whether other trademark functions than the origin functions are impaired, the Senate has also seen no reason to grant leave to appeal. In this respect, too, a decision has to be made on a case-by-case basis. Due to the special significance of its trademark, the plaintiff wants to be based on a different understanding of the public; however, this is a typical individual case decision.