LG Düsseldorf; 2018-04-20; 38 O 16/18
Decision by national courts in the field of European Union law — ECLI:DE:LGD:2018:0420.38O16.18.00
Date: 2018-04-20
Subject matter: Judicial cooperation in civil matters
Origin: Germany

82018DE0420(51)_ENG_SUMJURE
JURE summary
JURE summary
An administrator of union trademarks of the Birkenstock Group (hereinafter ‘the plaintiff 1’) and a worldwide seller of the Birkenstock Group’s products (hereinafter ‘the plaintiff 2’), who has the consent of plaintiff 1 to use the trademarks, filed an application against the organiser of the  Amazon Marketplace (hereinafter ‘defendant 1’), the seller of products on amazon.de (hereinafter ‘defendant 2’) and the provider of the website www.amazon.de (hereinafter ‘defendant 3’) seeking a preliminary order forbidding them to offer and promote, by themselves or by third parties, products under the sign ‘Birenstock’ in Germany or to entrust these commercial activities to third parties if  such sign would be used in promotional texts within internet advertisements as indicated in the petition.
The search engine Google featured an AdWords advert where the search of the word ‘Birenstock’ resulted in the depiction of the advertisement ‘Birenstock bei Amazon.de – Riesenauswahl, aktuelle Trends’ (‘Birenstock at Amazon.de – giant choice of products, current trends’). After a click on the advertisement, users were forwarded to the website amazon.de.
The application of the plaintiff filed with the Landgericht Düsseldorf (hereinafter ‘the Court of First Instance’) was admissible.
The international jurisdiction of the German courts regarding the claim against defendant 1 results from Article 131(1) of the Regulation (EU) 2017/1001(1). In the terms of the claim pursued by plaintiff 2 out of a national business relationship, the international jurisdiction of the German courts follows from Article 7(2) of the Brussels I Regulation (recast) (2).
The plaintiffs had credibly presented a reason for the issuance of a preliminary order. Pursuing a cease and desist order to prevent an alleged infringement of trademark rights is by its nature urgent when the purpose of such order is to prohibit continuing infringements. Otherwise, the distinctive power and the appreciation of the sign of the plaintiff could suffer an irreparable damage.
In addition, the petition was justified.
Trademark owners can forbid that a sign for their products or services might be used in the course of business without their consent if the sign is identical or similar to the union trademark and therefore the likelihood of confusion exists for consumers.
This was the case in this dispute and this provision also applies to any possible spelling or typing mistake, namely the omission of the ‘k’ letter in the word ‘Birenstock’. Contrary to the opinion of the defendants, this is not to be interpreted as the exhaustion of the rights conferred by an EU trademark under Article 15(1) of the Regulation (EU) 2017/1001.
The Court of First Instance upheld the petition of the plaintiffs seeking the issuance of a preliminary order.
(1) Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.
(2) Regulation (EU) No 1215/2012 of the European Parliament and of the Council of 12 December 2012 on jurisdiction and the recognition and enforcement of judgments in civil and commercial matters.