The European court ruled in a very interesting case C‑179/15 Daimler AG v Együd Garage Gépjárműjavító és Értékesítő Kft. The case concerns the following:
Daimler, a motor vehicle manufacturer, is the proprietor of the international figurative trade mark Mercedes-Benz, reproduced below, which is also protected in Hungary and covers, inter alia, motor vehicle parts.Együd Garage is a company governed by Hungarian law engaged in the retail sale of motor vehicles and parts and their repair and servicing. That company specialises in the sale of Daimler goods and in the supply of related services.
In 2007, Mercedes Benz Hungaria Kft. (‘Mercedes Benz Hungaria’), Daimler’s subsidiary company which is not a party to the main proceedings, and Együd Garage concluded a contract for the supply of after-sales services, which expired on 31 March 2012. Under that contract Együd Garage was entitled to use the abovementioned trade mark and to describe itself as ‘felhatalmazott Mercedes Benz szerviz’ (‘authorised Mercedes-Benz dealer’) in its own advertisements. While the after-sales services contract was in force, Együd Garage ordered, from Magyar Telefonkönyvkiadó Társaság (‘MTT’), which provides online advertising services at the web address http://www.telefonkonyv.hu, the publication, for the period covering the years 2011 to 2012, of an advertisement which names that company as an authorised Mercedes-Benz dealer.
Following the termination of that contract, Együd Garage tried to end all use of the trade mark at issue, on the basis of which the public might assume that there was still a contractual link between it and Daimler.In particular, Együd Garage asked MTT to amend the advertisement so that it no longer made reference to it as an authorised Mercedes-Benz dealer.Furthermore, Együd Garage wrote to the operators of several other websites requesting the removal of online advertisements which had been published without its consent, in particular without Együd Garage having ordered them, and which presented that company as an authorised Mercedes-Benz dealer. Despite taking those steps, online advertisements containing such a reference continued to be distributed online. Moreover, when the key words ‘együd’ and ‘garage’ were inserted into the Google search engine, this resulted in a list of results displaying such advertisements in the first line of which, serving as a link, Együd Garage appeared as an ‘authorised Mercedes-Benz dealer’.
In those circumstances Daimler brought an action before the referring court seeking, first, a declaration that Együd Garage infringed the trade mark Mercedes-Benz by the abovementioned advertisements and, secondly, an order that Együd Garage remove the advertisements at issue, refrain from further infringements and publish a corrigendum in the national and regional press.Együd Garage’s defence was that, apart from the advertisement that appeared on the website http://www.telefonkonyv.hu, it did not place any other advertisements on the internet and that those at issue appeared or still appear contrary to its intention, without it having any influence on their content, publication or removal.In that context, Együd Garage relied on its own private expert to show that it had been the victim of a common commercial practice which consists, essentially, in certain providers of internet advertising services summarising advertisements published on other advertising sites, without the knowledge or consent of the advertiser, in order to create their own database of information available free of charge or for consideration.In those circumstances, the Fővárosi Törvényszék (Budapest Municipal Court, Hungary) decided to stay the proceedings and to refer the following question to the Court 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 Court decision is:
Article 5(1)(a) and (b) of Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks 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.