A separate advertisement by an independent and urelated operator does not lead to the use of the trade mark by the originating party


MK Advokaten GbR v MBK Rechtsanwälte GbR

Trade marks: Scope of protection

07 Jul 2020

The matter at hand

MK Advokaten and MBK Rechtsanwälte are both law firms established in Germany. MBK Rechtsanwälte is the proprietor of the German trade mark “MBK Rechtsanwälte” for legal services. MK Advokaten used the names 'mbk rechtsanwälte' and 'mbk advokaten' in course of trade. MBK Rechtsanwälte considered this to be an infringement of its trade mark.

The Landgericht Düsseldorf (Düsseldorf Regional Court) prohibited the use of the sign ‘mbk’, under pain of a fine. Following the judgment, MBK Rechtsanwälte argued that references on the internet to 'mbk lawyers'   - originating from MK Advokaten - still existed. In defence, MK Advokaten argued that that raised entries were taken from a local telephone directory in which MK Advokaten was mentioned. The Landgericht ultimately imposed a fine on MK Advokaten: it had to remove, not only the references which it itself had arranged, but also all other subsequent references that could financially benefit MK Advokaten.  The decision led to an appeal of MK Advokaten before the Oberlandesgericht Düsseldorf (the Higher Regional Court, Düsseldorf). 

Upon appeal, the Oberlandesgericht Düsseldorf acknowledges that it follows from settled case-law that, where a defendant infringes another person’s trade mark by advertising on the internet, he is not only obliged to erase the references arranged by itself, but must at least make a serious attempt to delete subsequent references. The Oberlandesgericht, however, also considered it to be unclear whether that approach is consistent ECJ’s case-law, especially in view of the judgment C-179/15 (Daimler).

Under those circumstances the Oberlandesgericht referred a question to the ECJ, asking, if the reference of a third party on a website in an entry that contains a sign identical with a trade mark, falls within the scope of the “using” of that trade mark, within the meaning of Article 5(1) Trade Mark Directive, if the entry was not placed there by the third party itself, but was reproduced by the website’s operator from another entry that the third party had placed in infringement of the trade mark (paragraph 17).

The judgment of the ECJ

The ECJ firstly reiterates that “the offering of goods and services under a sign which is identical with or similar to another person’s trade mark and advertising those goods or services under that sign constitutes “use” in relation to that sign” with a reference to C-236/08 and C-238/08 (Google France and Google). Furthermore, the ECJ refers to the Interflora judgment (C-323/09), wherein the ECJ ruled that such “use” of a sign exists where that sign is used as a keyword in an online referencing service. In addition, it is not a requirement that the sign also appears in the advertisement itself (paragraph 20).

Subsequently, the ECJ recalls what was ruled in the Daimler judgment (C-179/15): in essence, the ECJ confirmed that Article 5(1) Trade Mark Directive has to be interpreted that a person cannot be held liable for the independent actions of other economic operators, who refer “on their own initiative and in their own name”. Therefore, “using” implies active conduct and direct or indirect control. The sole ground that such use could financially benefit the person is of no significance.

For this reason, the ECJ holds that when there is no direct or indirect relationship, there is no “using” as meant in Article 5(1) Trade Mark Directive by MK Advokaten itself.

The ECJ recalls in line with the ECJ’s previous case law that in such a case, “those website operators are using, within the meaning of Article 5(1) Trade Mark Directive, signs identical with or similar to another person’s trade mark”(C-567/18 (Coty Germany).

In the light of the above, the ECJ concludes that Article 5(1) Trade Mark Directive must be interpreted “as meaning that a person operating in the course of trade that has arranged for an advertisement which infringes another person’s trade mark to be placed on a website is not using a sign which is identical with that trade mark where the operators of other websites reproduce that advertisement by placing it online, on their own initiative and in their own name, on other websites” (paragraph 31).

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