CJEU on liability for trademark infringement in online advertising

Daimler, a motor vehicle manufacturer and owner of the well-known trademark “Mercedes-Benz” brought an action before Budapest Municipal Court against Együd Garage, a former authorized dealer, seeking, first, a declaration that Együd Garage infringed the trademark Mercedes-Benz by the online advertisements and, secondly, an order to Együd Garage to remove the advertisements at issue, refrain from further infringements and publish a corrigendum in the national and regional press.

In fact, after the termination of the contract that entitled Együd Garage to use the trademark Mercedes-Benz for describing itself as ‘felhatalmazott Mercedes Benz szerviz’ (‘authorised Mercedes-Benz dealer’) in its own advertisements, Daimler discovered on Internet a number of advertisements still naming Együd Garage as an authorised Mercedes-Benz dealer.

Együd Garage’s defence was that, apart from the advertisement that appeared on one website, it did not place any other advertisements on the internet and that those at issue appeared or still appear contrary to its intention, without it having any influence on their content, publication or removal.

Furthermore, the former dealer wrote to the operators of several other websites requesting the removal of online advertisements which had been published without its consent.

In those circumstances, the Budapest Municipal Court decided to refer to the Court of Justice of the European Union for a preliminary ruling.

‘Must Article 5(1)(b) of [Directive 89/104] be interpreted as meaning that the trade mark proprietor is entitled to prevent a third party named in an advertisement on the internet, even though the advertisement was not placed on the internet by the person featuring in it or on his behalf, or it is possible to access that advertisement on the internet despite the fact that the person named in it took all reasonable steps to have it removed, but did not succeed in doing so.

On 3 March 2016 the Court of Justice of the European Union (Case C-179/15, full text here), stated that the publication on a website of an advertisement referring to a trade mark constitutes a use of that trademark by an advertiser who has ordered it. However, the appearance of the trademark on the site in question no longer constitutes a “use by the advertiser” where he has expressly requested the operator of the site, from whom he had ordered the advertisement, to remove it and the operator has disregarded that request. It is apparently the first time that the CJEU focuses on the assessment of the tort on subjective behaviour.

The ruling addresses the notion of “trademark use” in online advertising.

According to the CJUE “using” a trade mark in the meaning of Article 5(1) of the Directive 2008/95/EC “involves active behaviour and direct or indirect control of the act constituting the use. However, that is not the case if that act is carried out by an independent operator without the consent of the advertiser, or even against his express will”.

Accordingly, where that online advertising provider fails to comply with the advertiser’s request to remove the advertisement at issue or the reference to the mark contained therein, the publication of that reference on the referencing website can no longer be regarded as a use of the mark by the advertiser. Thus, the latter cannot be held liable for the acts and omissions of operators of other websites who, without his consent, have put the advertisement on their own site.

However, the CJEU states that the proprietor of the trademark may, first, claim reimbursement from the advertiser for any financial benefit that he may obtain from advertisements still online and, secondly, bring proceedings against operators of websites that infringe the rights connected with its trade mark.

Gianluca De Cristofaro

CJEU C-179/15, Daimler AG v. Együd Garage Gépjárműjavító és Értékesítő Kft.

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