In the context of online advertisements, the CJEU has considered whether a person is liable if an infringing sign they use online is subsequently used by a third party who places the infringing sign on other websites. Is the original infringer still liable for those subsequent infringing acts?
The answer? No! Article 5(1) of Directive 2008/95 must be interpreted as meaning that a person does not use the sign identical to that mark when website operators use the sign on other websites of their own initiative and in their own name. This reaffirms the case of Daimler, where infringing use was held not to include reproductions of similar/identical signs by a third-party online publisher, where the mark was used by a third party in this way.
Case summary
MBK Rechtsanwälte, a German law firm, owns the German trade mark for its name covering legal services. Mk Advokaten, another law firm, initially operated under the name "mbk rechtsanwälte" and the corresponding name in the Dutch language "mbk advokaten".
MBK Rechtsanwälte brought an infringement action against Mk Advokaten. The Landgericht Düsseldorf prohibited Mk Advokaten from using the letter group "mbk" for legal services, under penalty of a fine. Mk Advokaten subsequently stopped using the infringing signs.
When performing a Google search, the terms "mbk rechtsanwälte " led to several business referral websites posting an advertisement for Mk Advokaten's legal services. MBK Rechtsanwälte brought further proceedings against Mk Advokaten over this alleged infringement and applied to the Court to impose a fine on the firm.
Mk Advokaten argued that the only initiative it had taken consisted of registering the firm in the online directory, Das Örtliche.
Following the earlier decision of the Landgericht Düsseldorf, Mk Advokaten had withdrawn this entry for any sign containing the group of letters "mbk". There were no other obligations, so the firm had not asked for subsequent references to the infringing sign to be deleted from other websites.
German case law has established that when an online advertisement infringes a third party right, the person who ordered the advertisement must not only have it deleted on this site but also verify, using the usual search engines, that operators of other websites have not also included the advertisement. If this is the case, the person must make a serious attempt to have these subsequent references deleted. A fine was therefore imposed on Mk Advokaten, since the firm had not done enough by "merely arranging" for the advertisement to be deleted. This decision was appealed.
The Court sought the following clarification from the CJEU: Does a third party referenced on a website in an entry containing a sign identical to a mark make use of that mark within the meaning of Article 5(1) of Directive 2008/95, if they are not the one who inserted this entry and the operator of the site took it from another entry that the third party had published?
The decision
The CJEU made it clear that there is a distinct difference between use which has been authorised and use which has not been authorised. Independent third-party reproduction was outside the scope of the context of "use" by Mk Advokaten. Within the context of Article 5(1) of Directive 2008/95:
- autonomous acts of third parties cannot be imputed onto the original infringer where the other parties have no direct or indirect relationship with the original infringer and act not on its order and on its behalf, but on their own initiative and in their own name, and
- "make use" implies active behaviour and control, direct or indirect, of the act constituting use.
The CJEU confirmed it is for the national courts to assess whether "use" results from the conduct of Mk Advokaten and whether the operators had placed the advertisement on behalf of the firm. In the absence of this evidence, MBK Rechtsanwälte was not justified in its claim against Mk Advokaten.
Case Ref: C-684/19
