Date: 8 October 2020
The Court of Justice of the European Union (CJEU) has recently considered whether a person is liable for trade mark infringement if an infringing sign they use online is subsequently used by a third party who places the infringing sign on other websites.
In a request for a preliminary ruling (Case C-684/19), the court considered this case in the context of Article 5 (1) of the Trade Marks Directive (2008/95/EC) (the “TMD”).
The case involved a legal dispute between two law firms, MBK Rechtsanwälte and mk advokaten, over the use, in the course of trade, of the mark “mbk” for legal services. The claimant, who owned a German trademark “MBK Rechtsanwälte”, brought an infringement action against the defendant's use of “mbk” at the Düsseldorf Regional Court. The claimant’s claim was successful and the defendant was prohibited from, under pain of a fine, from using, in the course of trade, the mark ‘mbk’ for legal services.
However, it was subsequently shown that entering the terms “mbk Rechtsanwälte” on Google led to hits to several websites displaying advertisements for the legal services of the defendant. The claimant therefore applied to the Düsseldorf Regional Court to impose a fine on the defendant.
In its defence, mk advokaten argued the only initiative on its part had been to register itself in the online directory “Das Örtliche”, and this entry had been deleted following the judgment. According to the defendant, therefore, it was not under any further obligation, as it had not requested inclusion on any other websites.
The Düsseldorf Regional Court nevertheless saw this as a violation of the judgment and, therefore, granted the claimant's application. The defendant filed an appeal with the Düsseldorf Higher Regional Court, which then suspended the proceedings and submitted the following question to the CJEU for a preliminary ruling:
“Is a third party referenced on a website in an entry that contains a sign identical with a trade mark "using" that trade mark, within the meaning of Article 5(1) of Directive 2008/95, 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?”
The background to this question was that the Düsseldorf Higher Regional Court had doubts about settled German case law which, in cases where an advertisement placed online on a website infringes another person’s rights, assumes that the person who had ordered that advertisement must not only arrange for it to be deleted from that website but also ascertain, with the help of the usual search engines, that the operators of other websites have not reproduced that advertisement and, if that is the case, make a serious attempt to have subsequent referencing deleted.
The Düsseldorf Higher Regional Court doubted that the settled German case law would be compatible with Daimler (C‑179/15, EU:C:2016:134) since in that case, the CJEU followed a different approach as regards advertisements infringing another person’s trade mark.
The CJEU confirmed the opinion of the OLG Dusseldorf and decided that a person from the perspective of Article 5(1) of the TMD could not be held liable for the independent actions of other economic operators, such as those of referencing website operators with whom that person had no direct or indirect dealings and who did not act by order and on behalf of that person, but on their own initiative and in their own name.
The CJEU’s decision confirms that it understands “use” within the meaning of Article 5 (1) of Directive 2008/95 to mean active behaviour and direct or indirect control over the act of use. Those conditions are not met in the case of an independent economic operator. In the opinion of the CJEU, the economic advantage that might possibly result from such an act is not sufficient for use.
From a UK and EU perspective, this decision confirms that a defendant will only be liable for infringing advertisement content placed online at its instruction will not be responsible for the further reproduction of such content or ads by third party operators of other websites on their own initiative. This would appear sensible, as a ruling to the contrary would have resulted in defendants being liable for infringing content placed online without their knowledge or involvement. This is at odds with what the legal position previously was in Germany. German courts will now have to bring their practice into line with this ruling.
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