Unauthorized use of a trademark in advertisements published on the Internet without the consent of the advertiser

The Court of Justice of the European Union has just delivered a judgment (case C-179/15) in response to a request for a preliminary ruling submitted by the Fővárosi Törvényszék (Budapest Municipal Court, Hungary) in relation to the interesting question of the interpretation to be given to Article 5(1)(a) and (b) of the First Council Directive in a case where unauthorized use is made of a mark in an advertisement published on the Internet without the consent of the advertiser or which remains there despite the efforts of the latter to have it removed.

The background

The parties to the main proceedings out of which the question arose are a motor vehicle manufacturer and a Hungarian company engaged in the retailing of motor vehicles and their parts and in the repair and servicing of such vehicles.

In 2007 the two had entered into an after-sales service agreement under which the Hungarian company was entitled to describe itself as an authorized dealer of the motor vehicle brand. The agreement expired in March 2012.

While the agreement was in force, the Hungarian company ordered from an online advertising services provider the publication on the website www.telefonkonyv.hu of an advertisement in which the company was presented as an authorized dealer. The publication was to cover the years 2011 to 2012 only.

Following the expiry of the agreement, the Hungarian company tried to  remove from the Internet any advertisement in which it was presented as an authorized dealer of the brand to which the contract related. To that effect it contacted the provider it had engaged and also wrote to various operators of other websites on which advertisements, describing it as an authorized dealer, had appeared. However, those requests went unheeded.

In view of the ongoing use of its trademark, the motor vehicle manufacturer brought a legal action seeking: (i) a declaration that the Hungarian company had infringed the trademark through those advertisements; (ii) that the Hungarian company be ordered to remove those advertisements, to refrain from any further infringement and to publish a corrigendum in the national and regional press.

In its defence the Hungarian company argued that the only advertisement it had placed on the Internet was the one published on the website www.telefonkonyv.hu and that the others had been published without its consent. In this regard it submitted an expert report showing that the advertisements had been reproduced by certain providers of Internet advertising services without its knowledge or consent and that this is in fact a common commercial practice in which some operators engage. 

In these circumstances the Budapest Municipal Court stayed the proceedings in order to refer the following question to the Court of Justice for a preliminary ruling:

“Must Article 5(1)(b) of [Directive 89/104] 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?”

The question referred

In order to provide a response the Court of Justice begins by defining the scope of the question and by recasting it as follows:

[The question is] “whether 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 published 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, makes a use of that sign which may be prevented by that proprietor under that provision, even where that advertisement has not been placed by that third party or on his behalf or where that third party took all reasonable steps to have it removed, but did not succeed in doing so”.

Then, following a brief reference to the way in which the provisions of article 5(1)(a) and (b) of the Directive have been interpreted to date, the Court, turning to the specific circumstances of the case, states that although the publication on a referencing website of an advertisement mentioning someone else’s trademark is attributable to the advertiser who ordered the advertisement and on whose instructions the website operator acted, that advertiser cannot be held liable for the acts and omissions of a provider who, intentionally or negligently, disregards subsequent instructions from the advertiser intended precisely to prevent that use of the trademark. According to the Court, it cannot be considered that there is use of the mark by the advertiser when the provider has failed to comply with the advertiser’s request to remove the advertisement in question or the reference to the trademark contained therein.

As to the advertisements published on other websites, without the knowledge or consent of the advertiser, the Court notes that an advertiser cannot be held liable for the independent actions of other economic operators with whom the advertiser has no dealings whatsoever and who do not act on behalf or by order of the advertiser.

The Court justifies its conclusion by referring, first, to the ordinary meaning of the expression “zu benutzen”, “using”, “faire usage”, “usare”, “het gebruik”, “használ”, as used respectively in the German, English, French, Italian, Dutch and Hungarian versions of Article 5(1) of the Directive, which implies active behaviour and direct or indirect control of the act constituting the use. According to the Court, there is no such active behaviour when the act is performed by an independent operator without the consent, or even against the express will, of the advertiser. At this point the Court also notes that article 5(3) of the Directive, when listing the types of use which the trademark owner may prohibit, refers only to forms of active behaviour, such as affixing the sign, using the sign, offering the goods, etc.

Lastly, in support of its conclusion the Court also refers to the very purpose of Article 5(1) of the Directive, which is none other than that of providing the proprietor with a legal instrument allowing him to prohibit and, therefore, to prevent any use of his trademark by a third party without his consent. However, only a third party who has control over the act constituting the use is able to stop that use and therefore comply with that prohibition. The Court therefore concludes that if article 5(1) were interpreted in the sense that, in a case such as this, the trademark owner had the power to prohibit the advertiser from making the contested use, that interpretation would run counter to the purpose of article 5(1) and to the principle  that no one can be legally obliged to do the impossible (impossibilium nulla obligatio est).

All the foregoing leads the Court to respond as follows to the question referred to it: 

“… 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”.

It is to be noted, however, that in its judgment the Court leaves the door open for the proprietor not only to take action against the operators of the referencing websites at issue but also, on the basis of national law, to claim from the advertiser the reimbursement of the financial advantage that he may have managed to obtain.

Author: Ana Sanz

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