The perpetuation of trademark infringement by third parties: judgment of the CJEU
The German law firm MBK Rechtsanwälte owns an eponymous trademark, registered for legal services. mk advokaten is also a German law firm that initially operated under the names “mbk rechtsanwälte” (for Germany) and “mbk advokaten” (for the Netherlands). “Initially” because following an infringement action brought by the first, the second was ordered to change its name. Indeed, by a judgment of October 17, 2016, the Landgericht Düsseldorf prohibited mk advokaten from using, in the course of trade, the acronym “mbk” for legal services. The respondent complied with this obligation by renouncing to “mbk rechtsanwälte” and “mbk advokaten”. However, third-party sites continued to refer to “mbk rechtsanwälte” and “mbk advokaten”.
The circumstances call for a distinction between two situations: solicited advertising and unsolicited advertising. Firstly, if the advertisement is requested by the person who benefits from it (the advertiser), it is up to the latter to take all due diligence to put an end to it. Regarding this first hypothesis, there is no room for discussion. Secondly, if the recipient has not solicited the advertisement, two opposing opinions are possible. The first, supported by the firm MBK Rechtsanwälte and the German courts, is based on a theory known since the dawn of time: who benefits from the crime? It is a matter of establishing the obligation to stop counterfeiting on those who benefit from it:
“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”. (para. 13).
“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.” (para. 14).
The second opinion, supported by “mbk advokaten”, is to promote the idea that the beneficiary of the advertising played no active role in the infringement or the perpetuation of the infringement. In other words, the beneficiary is not the source of the disputed reference; it is not the announcer. Therefore, it is not up to the beneficiary to identify and stop such infringement.
Hence the preliminary question to the Court of Justice of the European Union (CJEU):
“whether Article 5(1) of Directive 2008/95 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 using a sign which is identical with that trade mark where the operators of other websites reproduce that advertisement by placing it online on other websites.” (para. 18)
The CJEU recalled its case law:
No. Jurisprudence Para. 19 "In that regard, it must first of all be noted that the offering of goods or services under a sign which is identical with or similar to another person's trade mark and advertising those goods or services under that sign constitutes 'use' in relation to that sign (see, to that effect, judgment of March 23 2010, Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraphs 45 and 61 and the case-law cited)." Para. 20 "20 In addition, it is settled case-law that such use of a sign that is identical with or similar to another person's trade mark exists where that sign, selected by an advertiser as a keyword in an online referencing service, is the means used by the advertiser to trigger the display of its advertisement, even where that sign does not appear in the advertisement itself (see, to that effect, judgment of September 22 2011, Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraphs 30 and 31 and the case-law cited)." Para. 21 "21 Thus, where a person operating in the course of trade orders, from the operator of a referencing website, the publication of an advertisement the display of which contains or is triggered by a sign which is identical with or similar to another person's trade mark, that person must be considered to be using that sign, within the meaning of Article 5(1) of Directive 2008/95 (see, to that effect, judgment of March 3 2016, Daimler, C‑179/15, EU:C:2016:134, paragraphs 29 and 30)." Para. 22 "22 By contrast, that person cannot be held liable, under Article 5(1) of Directive 2008/95, for the independent actions of other economic operators, such as those of referencing website operators with whom that person has no direct or indirect dealings and who do not act by order and on behalf of that person, but on their own initiative and in their own name (see, by analogy, judgment of March 3 2016, Daimler, C‑179/15, EU:C:2016:134, paragraphs 36 and 37)." Para. 23 "23 The term 'using' in Article 5(1) of Directive 2008/95 involves active conduct and direct or indirect control of the act constituting the use. However, that is not the case if that act is carried out by an independent operator without the consent of the advertiser (judgment of March 3 2016, Daimler, C‑179/15, EU:C:2016:134, paragraph 39)." Para. 24 "24 That provision cannot therefore be interpreted as meaning that a person may, irrespective of its conduct, be considered to be a user of a sign that is identical with or similar to another person's trade mark on the sole ground that such use is capable of providing a financial benefit to the former (see, to that effect, judgment of March 3 2016, Daimler, C‑179/15, EU:C:2016:134, paragraph 42)."
For the CJEU, it is appropriate to examine the behavior of mk advokaten and any direct or indirect relationships he has had with the operators of the websites in question (point 25):
“According to that line of case-law of the Court, in the present case, it is for the referring court to examine whether it follows from the conduct of mk advokaten, in the context of either a direct or indirect relationship between mk advokaten and the operators of the websites in question, that those operators had placed the advertisement online by order and on behalf of mk advokaten. In the absence of such conduct, it must be concluded that MBK Rechtsanwälte is not justified, under the exclusive rights provided for in Article 5(1) of Directive 2008/95, in bringing an action against mk advokaten on the ground that the advertisement was published online on websites other than the Das Örtliche directory.” (para. 25)
In other words :
“Article 5(1) of Directive 2008/95/EC of the European Parliament and of the Council of October 22 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.”
Concretely, the solution adopted amounts to placing the burden of detecting and removing infringing references on the owner of the trademark.
The facts of the present case call for a remark: the situation the parties were confronted with is not unusual for two reasons. First, the trademark in question is an acronym trademark. These trademarks are more often subject to infringement. They also face competition, often fair, in the field of domain names (“Trademarks and domain names: it’s hard to be an acronym trademark!”, iptwins.com, April 14, 2019). Second, third-party sites producing specialized information (for example, relating to lawyers) have proliferated for several years. The latter, intermediaries for facilitating contact between lawyers and clients, directories, or ranking websites, have as many advantages as risks for law firms, which, therefore, may be obliged to make further efforts to maintain a favorable reputation.