Trade marks: infringement in online advertising

05 May 2016

Audrey Horton

The European Court of Justice (ECJ) has held that online advertisements referring to trade marks in the context of a former authorised dealership did not infringe those trade marks where reasonable steps had been taken to have the references removed from the advertisements.

Background

Article 5(1)(a) of the Trade Marks Directive (2008/95/EC) (the Directive) (Article 5(1)(a)) provides that the owner of a registered trade mark may prevent third parties from using in the course of trade any sign which is identical to its mark in respect of goods or services which are identical to those for which the mark is registered. A claim under Article 5(1)(a) can only succeed if the use affects, or is liable to affect, the functions of the trade mark, which include its origin, advertising, investment and communication functions.

Article 5(1)(b) of the Directive (Article 5(1)(b)) provides that a trade mark owner has the right to prevent unauthorised third parties from using, in the course of trade, an identical or similar sign for identical or similar goods or services to those for which the mark is registered, where there exists a likelihood of confusion or association on the part of the public.

Facts

D owned a figurative trade mark for “Mercedes-Benz”. Under an agreement with D’s subsidiary company, E was entitled to describe itself as an authorised Mercedes-Benz dealer and ordered the publication of an advertisement for a certain period. Once the agreement terminated, E asked the advertising service provider to remove the reference to E as an authorised dealer. E also wrote to several other websites requesting the removal of other online advertisements describing E as an authorised dealer that had been published without E’s knowledge or consent. 

D sued E in the Hungarian courts for infringement of its "Mercedes-Benz" trade mark. The Budapest Municipal Court asked the ECJ whether Article 5(1)(b) means that the trade mark owner is entitled to take action against 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 its behalf, and 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.

Decision

The ECJ held that Article 5(1)(a) and (b) mean that, where a third party is named in an online advertisement that contains a sign identical or similar to a trade mark so as to give the impression that there is a commercial relationship between the third party and the trade mark owner, but the advertisement had not been placed by the third party or on its behalf, the third party is not making a use of that sign that could be prohibited by the trade mark owner. In addition, the third party is not making a prohibited use of the sign if it placed the advertisement with the trade mark owner's consent, and the third party had expressly asked the website operator from whom it had ordered the advertisement to remove the advertisement or the reference to the mark.

Using a trade mark within the meaning of Article 5(1) involves active behaviour and direct or indirect control of the act constituting the use, which is not the case if that act is carried out by an independent operator without the consent of the advertiser, or even against its express will.


Case: Daimler AG v Együd Garage Gépjárműjavító és Értékesítő Kft C 179/15.

First published in the May 2016 issue of PLC Magazine and reproduced with the kind permission of the publishers. Subscription enquiries 020 7202 1200.

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