When advertisement on websites will not constitute a trademark infringement?

The European Court has ruled recently in the case C‑684/19 mk advokaten GbR v MBK Rechtsanwälte GbR. This case concerns the following dispute between two law firms with similar names:

The law firm MBK Rechtsanwälte, established in Mönchengladbach (Germany), is the proprietor of a German trade mark constituted by the name of that firm, ‘MBK Rechtsanwälte’. That trade mark is registered for legal services.

mk advokaten, established in Kleve (Germany), is also a law firm. Initially, it carried on its activities under the name ‘mbk rechtsanwälte’ and the corresponding name in Dutch, ‘mbk advokaten’. However, following an action for infringement brought by MBK Rechtsanwälte, theRegional Court, Düsseldorf, Germany, by judgment of 17 October 2016, prohibited mk advokaten, under pain of a fine, from using, in the course of trade, the group of letters ‘mbk’ for legal services. That judgment became final.

 Subsequently, it was shown that, when using the search engine operated by the company Google, entering the terms ‘mbk Rechtsanwälte’ led to several company referencing websites, such as the website http://www.kleve-niederrhein-stadtbranchenbuch.com, that displayed an advertisement for the legal services of mk advokaten.

MBK Rechtsanwälte took the view that it was thus shown that the prohibition imposed by the Regional Court, Düsseldorf was not being complied with, and requested that that court impose a fine on mk advokaten.

In its defence, mk advokaten submitted that, as regards advertisements on the internet, the only initiative on its part had been to register itself in the online directory Das Örtliche and that, following the judgment of 17 October 2016 of the Regional Court, Düsseldorf, it had withdrawn that registration for all signs containing the group of letters ‘mbk’. According to mk advokaten, it was not under any other obligation, as it had never requested inclusion on other websites.

The Regional Court, Düsseldorf upheld the request of MBK Rechtsanwälte. That court held that the advertisement placed online on the websites at issue benefited mk advokaten and was based on the one that mk advokaten had arranged to be placed in the Das Örtliche directoryIt imposed a fine on mk advokaten, since the latter had, following the judgment of 17 October 2016, merely arranged for the advertisement appearing in that directory to be deleted.

mk advokaten brought an appeal against that decision before the referring court, the (Higher Regional Court, Düsseldorf, Germany.

According to that court, the outcome of the dispute before it depends on the interpretation of Article 5(1) of Directive 2008/95.

That court states that it follows from settled German case-law that, where an advertisement placed online on a website infringes another person’s rights, the person who had ordered that advertisement must not only arrange for it to be deleted from that website but also ascertain, with the help of the usual search engines, that the operators of other websites have not reproduced that advertisement and, if that is the case, make a serious attempt to have subsequent referencing deleted.

According to that court, that case-law is based on the consideration that any display of the advertisement benefits the person whose goods or services are thus promoted. It is consequently for that person to take, in the event of infringement of another person’s rights, the requisite steps so that all instances of the advertisement concerned appearing on the internet are removed.

The referring court expresses doubts as to the compatibility of that German case-law with the principles set out in the judgment of 3 March 2016, Daimler (C‑179/15, EU:C:2016:134), since in that case, the Court followed a different approach as regards advertisements infringing another person’s trade mark. That approach might be applicable to the dispute before the referring court.

It is true that in the case that gave rise to that judgment of the Court, the advertisement which was the subject of the dispute in question had initially been lawful, whereas in the present case, the advertisement that mk advokaten ordered to be placed online infringed another person’s trade mark from the outset. Nevertheless, the relevance of that difference for the interpretation of the term ‘using’, within the meaning of Article 5(1) of Directive 2008/95, is not clear.

In those circumstances, the Higher Regional Court, Düsseldorf decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Is a third party referenced on a website in an entry that contains a sign identical with a trade mark “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 Court’s decision:

Article 5(1) 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 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 where the operators of other websites reproduce that advertisement by placing it online, on their own initiative and in their own name, on other websites.

“Perfect Bar” cannot be a perfect trademark in the EU

The US company Perfect Bar LLC  filed the following European trademark application for class 05 – various nutritional foods such as energy bars and food supplements:

The EUIPO issued a refusal for this application based on absolute grounds – descriptiveness and lack of distinctiveness.

According to the law, every trademark has to be a distinctive sign in order to serve as a source of trade origin.

In the appeal the General Court upheld this decision. The words Perfect and Bar just refers to the product characteristics. The graphic representation is so simple that can be perceived by consumers only as a decoration and not as a distinctive element.

In such situations, there are two main ways low distinctive signs to get protection.

The first was when the relevant sign is combined with distinctive words or graphics. However, if these additional elements are not distinctive by themselves this will not help for the trademark registration.

Another way is when an acquired distinctiveness is proved. This requires a genuine market use of the sign for a period of time within which consumers are started to perceive the sign as a source of trade origin. This has to be proved at the moment when the sign is filed as a trademark.

Source: Frouke Hekker –  Novagraaf – for Lexology.