No trademark use in advertisements on websites of independent operators29-01-2021 Print this page
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 when: the operators of other websites reproduce that advertisement by placing it online, on their own initiative and in their own name, on other websites.
The German law firm MBK Rechtsanwälte is the proprietor of the German trade mark "MBK Rechtsanwälte". That trade mark is registered for legal services. The law firm mk advokaten, also established in Germany, used to operate under the name "mbk rechtsanwälte" and the corresponding name in Dutch "mbk advokaten". Following an action for infringement, mk advokaten was prohibited from using the group of letters 'mbk' for legal services in the course of trade. After the judgment became final, it appeared that an advertisement offering the services of mk advokaten was visible on several websites. These websites came up in the Google search results when the terms "mbk Rechtsanwälte" were entered.
The referring court wishes to know whether a third party referenced on a website in an entry that contains a sign identical with a trade mark is "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 CJEU refers to the Daimler judgment (IPPT20160303), in which it was held that the term "using" requires active conduct and direct or indirect control of the act constituting the use. There is no "use" if the act is carried out by an independent operator without the consent of the advertiser.