The Court of Justice
of the European Union has just handed down a ruling (case C-179 / 15) solving an interesting question
preliminary ruling filed by the Fővárosi Törvényszék (Budapest Court, Hungary) on
the interpretation that should be given to article 5.1, letters a) and b) of the
Senior Management In a case in which we are faced with a unauthorized use of
brand in an advertisement published on the Internet without the consent of the advertiser
or that remains on the network despite its efforts to obtain its
withdrawal.
as part to a company in the automobile industry and a Hungarian company
dedicated to the retail trade of motor vehicles and spare parts
vehicles and the repair and maintenance of those vehicles.
provision of after-sales services for which the Hungarian company was
authorized to advertise as the “official workshop” of the automobile brand. Saying
contract ended in March 2012.
with a company the publication of an advertisement Online on the website www.telefonkonyv.hu which presented it as an authorized workshop of the brand. The
Publication of said announcement should be limited to the years 2011 to 2012.
companies, the Hungarian company tried to suppress any advertisements published on
Internet in which it was mentioned as an authorized workshop of the target brand
of the contract. To do this he went directly to the company he had
commissioned the publication of the ad, as well as several site operators
website in which advertisements appeared qualifying it as an “authorized workshop” for the vehicle brand
in question. However, the requests were not attended to.
automobile company initiated the corresponding actions aimed at: (i)
declared that the Hungarian company had infringed the trademark through said
advertisements; and (ii) that it be ordered to suppress the advertisements in
issue, refrain from any new infringement and publish a
rectification in national and regional newspapers.
advertisement that he put on the Internet was the one published on the website www.telefonkonyv.hu and that the other advertisements had been
published independently of their will. In this regard, the workshop provided
an expert report proving that the advertisements had been
copied and reproduced by certain advertising service providers
on the Internet, without your knowledge or consent, something that constitutes a
common commercial practice on the Internet by certain operators.
procedure and raised the following question for a preliminary ruling to the CJEU:
“Should Article 5, paragraph 1, be interpreted
letter b) of Directive [89/104] in the sense that the holder of a
brand is entitled to act against a third party named in an advertisement in
Internet, in which there is a sign confusing with the brand, referring to a
service of said third party identical to the products or services for which the
trademark is registered, in such a way that the public may be caused
mistaken impression that there is an official business relationship between the company
of that third party and the owner of the trademark, even when the advertisement has not been
placed on the Internet by the person who appears therein or on his behalf, or may
access to that advertisement on the Internet despite the fact that the person designated in it
has acted in a manner reasonably required to delete it, without having
achieved?”
question referred for a preliminary ruling
To answer the question raised, the CJEU begins
for delimiting the object of the question and reformulating it as follows:
“(…) if article 5, paragraph 1,
letters a) and b), of Directive 2008/95, must be interpreted in the
meaning that a third party, who is mentioned in an advertisement published on a site
of the Internet, which contains a sign identical or similar to a trademark in such a way
which may give the impression that a business relationship exists between him and
the owner of the trademark makes use of that sign that may be prohibited by
said owner under that provision, even if the advertisement has not been
placed on the Internet by that third party nor on its own account or despite the fact that it has
acted in the manner reasonably required to delete it, without having
achieved.”
interpretation given to article 5.1, letters a) and b) of the Senior Management to
date, the CJEU, taking into account the particularities of the case at hand,
states that although the publication on an Internet reference site of
an advertisement that mentions a foreign brand is attributable to the advertiser
who commissioned that advertisement and under whose instructions the operator acted
of the site, the advertiser cannot be charged with acts and omissions of the provider
who, deliberately or through negligence, disregards express instructions
of said advertiser aimed precisely at avoiding that use of the brand. Of
according to the Court, there will be no use of the trademark by the
advertiser when the provider refrains from complying with the request
of the advertiser to delete the advertisement in question or the mention of the brand
included in it.
without the knowledge or consent of the advertiser, the CJEU states that No.
The advertiser can be imputed to the autonomous acts of other economic operators with
those to which the advertiser has no relationship any and that they do not act on behalf or
order of the advertiser.
place, to the usual sense of the expression “zu
users say about us","using","make use of","use","het gebruik","use”, used respectively in
the German, English, French, Italian, Dutch and
Hungarian law of Article 5.1 of the Directive, which implies active behavior
and a domain, direct or indirect, of the act that constitutes the use. According to him
CJEU, this active behavior does not occur when the act is carried out by an operator
independent without the consent of the advertiser or even against the will
express of this. At this point, the Court also refers to the fact that the
Article 5.3 of the Senior Management, by listing the types of use that the owner of the
brand can prohibit, mentions only active behaviors (“put the sign","use the sign","offer",
etc.).
for the purpose of article 5.1 of the Directive, which is none other than to offer the
holder a legal instrument that allows it to prohibit and, therefore, to cease,
any use of your brand carried out by a third party without your consent. No
However, only a third party who has control of the act that constitutes the use
has the ability to put an end to that use and, therefore, to abide by said
prohibition. Therefore, the Court understands that if article 5.1 is
interpreted in such a way that, in a case like the one at hand, the holder of
the brand was empowered to prohibit the advertiser from controversial use,
Such an interpretation would be contrary to the purpose of article 5.1 and the principle impossibilium nulla
obligatio es.
in the following terms: "that he
Article 5(1)(a) and (b) of Directive 2008/95 must be interpreted
in the sense that a third party, who is mentioned in an advertisement published in a
Internet site, which contains a sign identical or similar to a trademark of such
way that may give the impression that a commercial relationship exists between
he and the owner of the trademark, does not make use of that sign that could be
prohibited by said owner under that provision, when the advertisement does not
has been placed on the Internet by that third party or on its behalf or, in the case of
that the advertisement has been placed by that third party or on its behalf with the
consent of the owner, when that third party has required the operator of the
website to which you commissioned the ad to remove the ad or the
mention of the brand included in it.”
leaves the door open not only to possible action against the operators of
referencing internet sites in question, but also, to the
possibility for the owner of the trademark to claim restitution from the advertiser
of the economic advantage that may have been obtained on the basis of the Law
national.
Author Ana sanz
Visit our web page: http://www.elzaburu.com/
