On 3 March 2016, ECJ released an interesting decision (Case C-179/15, click here) on the meaning of “using a trademark” and on liability for trademark infringement in online advertising.

  1. THE QUESTION REFFERED TO ECJ

The Fővárosi Törvényszék (Budapest Municipal Court, Hungary) decided to refer the following question to the ECJ concerning art. 5 of Directive 2008/95/EC to approximate the laws of the Member States relating to trade marks

“Must Article 5(1)(b) […] be interpreted as meaning that the trade mark proprietor is entitled to prevent a third party named in an advertisement on the internet from making use, for services of that third party identical to the goods or services for which the trade mark is registered, of a sign likely to be confused with the trade mark, in such a way that the public might be given the mistaken impression that there is an official commercial relationship between the undertaking of that third party and the trade mark proprietor, 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?”

  1. THE FACTS

Daimler is the owner of the international figurative trademark “Mercedes-Benz”, valid and enforceable, also in Hungary. Such a trademark covers, as commonly known, also motor vehicle parts.

Együd Garage is a Hungarian company active in the retail sale of cars and spare parts and in related assistance services. It has been an authorized Mercedes-Benz dealer for 5 years (from 2007 to 2012). On 31 March 2012, the relevant agreement with Daimler expired.

While it was an official dealer, Együd Garage ordered to MTT, a provider of online advertising services at the website www.telefonkonyv.hu, the publication for 2011 and 2012 of an advertisement in which Együd Garage appears as an authorized Mercedes-Benz.

Upon the expiration of the agreement with Daimler, Együd Garage asked to MTT to change the advertising by removing the reference to “authorized Mercedes-Benz dealer”. Likewise, Együd Garage wrote to several website operators to remove any advertising – published without its consent – in which it was named as authorised Mercedes-Benz dealer.

Despite the initiatives of Együd Garage mentioned above, online advertisements containing the reference to the “authorized Mercedes-Benz dealer” were still distributed online by third online ads providers, who summarised advertisements published on other websites.

Daimler sued Együd Garage for trademark infringement and Együd Garage based its defence by claiming that the contested advertisings circulated and appeared contrary to its intentions and that, indeed, it was “a victim of a common commercial practice”.

  1. ECJ’S ITER

Pursuant to art. 5 of Directive 2008/95/EC the proprietor of a trademark is entitled to “prevent all third parties not having his consent from using […]”.

Therefore, the first question is: “Did Együd Garage use the “Mercedes-Benz” trademark? So that, Daimler can prevent its usage?”

ECJ stated that “By ordering such an advertisement in the context of its commercial activity, the advertiser made “use” of the mark “in the course of trade” and “in relation to goods or services” which it offers to its customers” (§ 30).

However, in the case at hand, Együd Garage – upon the expiration of the relevant agreement with Daimler – asked to MTT and to other online providers to remove/change the advertising messages containing “authorized Mercedes-Benz dealer”. Therefore, the use of the trademark – namely the persisting availability online of such messages – could not be attributed to Együd Garage.

As a consequence, Együd Garage has not continued to use of the trademark “Mercedes-Benz”, since the expression “using” in article 5 (1) of the Directive “involves active behaviour and direct or indirect control of the act constituting the use” (§ 39).

The above, however, without prejudice to the possibility of the trademark owner to claim from the advertiser – where national laws allow it – the reimbursement of any financial benefits, and, for sure, to bring actions against the online providers, managing the websites on which the contested ads were still available.

  1. CONCLUSION AND RULING

It must be observed that an interpretation of Article 5(1) of Directive 2008/95, allowing, in a situation such as that at issue in the main proceedings, the proprietor of the mark to prohibit the advertiser from making the use complained of, on the sole ground that such use could possibly provide a financial benefit to the advertiser, would misconstrue the purpose of that provision and conflict with the principle that no one can be legally obliged to do the impossible (impossibilium nulla obligatio est)” (§ 42).

The answer to the question referred is that Article 5(1)(a) and (b) of Directive 2008/95 must be interpreted as meaning that a third party, who is named in an advertisement on a website, which contains a sign identical or similar to a trade mark in such a way as to give the impression that there is a commercial relationship between him and the proprietor of the trade mark, does not make use of that sign that may be prohibited by that proprietor under that provision, where that advertisement has not been placed by that third party or on his behalf or, if that advertisement has been placed by that third party or on his behalf with the consent of the proprietor, where that third party has expressly requested the operator of that website, from whom the third party ordered the advertisement, to remove the advertisement or the reference to the mark contained therein” (§ 44).