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?”
