The matter at hand
Daimler is the German manufacturer of Mercedes cars and the proprietor of the international figurative trade mark “Mercedes-Benz”. Együd Garage is a Hungarian company specialised in the sale and repair of Mercedes cars.
Együd Garage was a party to a contract for the supply of after-sales services concluded with (a subsidiary company of) Daimler, on the basis of which Együd Garage was entitled to use the trade mark and to describe itself as “an authorised Mercedes-Benz dealer” in its advertisements. While the contract was in force, Együd Garage ordered the publication of such advertisements from an online advertising service provider. Following the termination of that contract, Együd Garage tried to end all use of the trade mark at issue, in particular by asking the online advertising service provider to amend the advertisements in such a way that it no longer made reference to Együd Garage as an authorised Mercedes-Benz dealer. Furthermore, Együd Garage wrote to the operators of several other websites requesting the removal of its advertisements which had been published by those operators without its consent. Despite taking those steps, however, the advertisements continued to be distributed online.
In those circumstances, Daimler brought an action before the referring court in Budapest, seeking inter alia a declaration that Együd Garage infringed Daimler’s trade mark rights as a result of the continued online distribution of the advertisements.
In the proceedings before the ECJ, the referring court asked whether a third party who is named in an advertisement published online, which gives the impression that there is a commercial relationship between him and the proprietor of a trade mark, makes use of that trade mark in circumstances where (i) that advertisement has not been placed by that third party or at his request or (ii) where that third party has taken all reasonable steps to have it removed, but did not succeed in doing so.
The judgment of the ECJ
The ECJ first of all holds that the publication online of an advertisement on a referencing website, referring to another person’s trade mark, constitutes use of that trade mark by the advertiser if that advertisement was ordered by the advertiser and placed on the relevant website by a service provider acting on the instruction of the advertiser.
On the other hand, however, the ECJ considers that “no one can be legally obliged to do the impossible” (paragraph 43) and that therefore “the advertiser cannot be held liable for the acts or omissions of such a provider who, intentionally or negligently, disregards the express instructions given by that advertiser who is seeking, specifically, to prevent that use of the mark.” Accordingly, “where that 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” (paragraph 34).
As to the publication of advertisements by operators of websites “with whom the advertiser has no direct or indirect dealings and who do not act by order and on behalf of that advertiser, but on their own initiative and in their own name”, the ECJ holds that the advertiser cannot be held liable for the independent actions of such operators in the first place (paragraph 36). Consequently, the advertiser has no obligation to request those operators to remove the relevant advertisements.
The ECJ, however, continues that this does not preclude the trade mark proprietor from claiming “where appropriate” reimbursement of the financial advantage the advertiser takes from the continued publication of such advertisements if this is permitted on the basis of national law, nor from taking action against the operators of the websites at issue.
On this basis, the ECJ concludes that “Article 5(1)(a) and (b) of [Trade Mark Directive 2008/95Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks] 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” (paragraph 44).