Liability for trademark infringement on the Internet – Is the original infringer liable if an advertisement that infringes trademark rights is distributed on the Internet without his intervention?

(ECJ, judgement of 02.07.2020 – C-684/19)

In practice, again and again the question arises to what extent a debtor of omission must become active, in order to comply with his omission obligation. It is recognized that a titled obligation to cease and desist does not exhaust itself in mere inactivity. Rather, it also includes the performance of possible and reasonable actions to remedy the state of disturbance. It is also recognized that this may also include the obligation to act on third parties within the scope of what is possible and reasonable, insofar as this is necessary to eliminate the state of disruption.

What happens, however, if an advertisement that infringes trademark rights is spread on the Internet through the actions of third parties without any action on the part of the original infringer? Is the original infringer then also liable for these further infringing actions? This had to be decided by the European Court of Justice in its ruling of 02.07.2020. The answer is: No! According to the European Court of Justice, such an act does not constitute “use” within the meaning of Art. 5 (1) of Directive 2008/95/EC, so that independent acts of third parties following an infringement are not imputed.

1. Initial legal dispute

In the case on which the decision of the ECJ was based, the Regional Court (Landgericht) and the Higher Regional Court (Oberlandesgericht) of Düsseldorf had to decide on a dispute between two law firms. The law firm “MBK Rechtsanwälte”, which is the owner of the German trademark of the same name, had taken action against the law firm “mk advokaten”, also operating under the name “mbk Rechtsanwälte”. The latter was then prohibited from using this name by a legally binding decision of the Regional Court.

Subsequently, it turned out that the entry of “mbk Rechtsanwälte” in the search engine operated by Google continued to lead to hits on several websites with company entries, on which an advertisement for the legal services of “mk advokaten” then appeared.

The defendant “mk advokaten” took the view that it was only obliged to delete the entry it had arranged at the directory “Das Örtliche” which appeared on the Internet. However, there was no obligation to make further efforts, as it had not applied for any entries on other websites.

The Regional Court of Düsseldorf was of the opinion that the advertisement “mk advokaten” placed online on the other websites was to the benefit of the debtor and was based on the entry in the directory “Das Örtliche” directly commissioned by him. The Court did not consider it sufficient that “mk advokaten” had limited itself to having deleted the advertisement which appeared in the register “Das Örtliche”.

The Higher Regional Court of Düsseldorf, which was then called upon, pointed out that, according to the established case-law of the German courts, there was not only the obligation to delete infringing advertisements on the relevant website. Rather, the injunction debtor was obliged to investigate, with the help of the usual search engines, whether operators of other websites had taken over the infringing advertisement and, if this was the case, to seriously attempt to delete these later entries. According to the Düsseldorf Higher Regional Court, this case law is based on the consideration that every publication of the advertisement benefits the person whose goods or services are advertised in this way. Therefore, in the event of an infringement of the rights of third parties, the efforts associated with the deletion of all publications of the advertisement in question on the Internet would have to be undertaken – provided that the debtor benefited economically from the third party’s actions.

The question was whether such advertisements, which are not placed by the original infringer himself, but are taken over by the website operator from another registration, still constitute a “use” within the meaning of Art. 5(1) of Directive 2008/95/EC. This was denied by the European Court of Justice in its decision of 03.03.2016 (C-179/15 – Daimler). The subsequent registrations do not constitute a use within the meaning of Art. 5(1) of the Directive, as use requires active action. According to the court in the Daimler decision, the actions of third parties are not attributable to the party that merely commissioned an initial entry on a specific website.

2. Question referred for a preliminary ruling

The Higher Regional Court stayed proceedings and referred 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 trademark?”

3. Decision of the European Court of Justice

In its judgment, the Court ruled that independent acts of other economic operators, such as the operators of referencing sites with which the original infringer has no direct or indirect relationship and which do not act on their behalf and for their account but on their own initiative and in their own name, are accordingly not to be imputed. The term “use” requires active action and direct or indirect control over the act of use. That is not the case where that act is carried out by an independent economic operator without the consent of the advertiser. The term ‘use’ cannot be interpreted as meaning that a person can be regarded as a user, irrespective of his conduct, simply because that use may confer an economic advantage on him. If the original infringer is not a customer of the operators of referencing websites, it must be assumed that these operators are themselves using the infringing trademark within the meaning of Article 5(1) of Directive 2008/95. The trademark owners could therefore take action against the operators of the referencing websites themselves.

According to the ECJ, the situation is different only if the entry in question was commissioned by the original infringer or is used as a keyword in an internet referencing service.

4. Effects on practice

The European Court of Justice thus clarifies that the debtor of a claim for injunctive relief is in principle not liable for the independent further distribution by third parties of content removed from his website or a publication commissioned by him. The scope of a debtor’s liability for injunctive relief is thus limited in comparison to the (previous) established case law of the German courts. On the one hand, this reduces the obligations of a debtor of injunctive relief. On the other hand, the risk that entries from other websites may be taken over unsolicitedly must now be borne not by the infringer but rather by the injured party. According to the European Court of Justice, the trademark owner must now assert his property rights against each individual operator who has taken over the advertisement.

As far as the judgement thus benefits the original infringer on the one hand, in that such entries which were not caused by him are not counted and he does not have to remove them, it makes the enforcement of the rights of property right owners considerably more complicated on the other hand. They now have to take action not only against the original infringer, but possibly against a large number of other website operators. The enforcement of their intellectual property rights is therefore made considerably more difficult.

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