COURT OF JUSTICE OF EUROPEAN UNION – CASE C-179/15 OF MARCH 3, 2016, DAIMLER AG V. EGYÜD GARAGE « AUTHORISED MERCEDES-BENZ DEALER »
Együd Garage is an authorised Mercedes-Benz dealer, presenting hiself as such in his advertisements. Daimler AG, the company exploiting the trademark MERCEDES-BENZ ended the contract authorising Együd Garage to use their trademark. The garage had ordered an advertisement to a service provider when the contract was still in force, at the time of its termination, the garage asked the service provider to delete the advertisement from the website, but his demand remained without result.
The Court observed the following points:
- “By ordering such advertisement in the context of its commercial activity, the advertiser made ‘use’ of the mark” (paragraph 30). Since this advertisement order was done when the contract authorising this was still in force, “it must be held that this was done with the consent of the proprietor of the mark” (paragraph 31);
- The ordinary meaning of the expression “using” (in English and in other languages), involves “active behaviour 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, or even against his express will” (paragraph 39).
Therefore, the continuing of this advertisement after the termination of the contract “that advertiser (Együd Garage) cannot be held liable for the acts or omission of such a provider who, intentionally or negligently, disregards the express instructions given by that advertiser who is seeking, specifically, to prevent that use of the mark” (paragraph 34), and that “an advertiser cannot be held liable for the independent actions of other economic operators” (paragraph 36).
Accordingly, the Court concluded that Article 5 1) b of Directive 89/104 (now Directive 2008/95) [relative to the prevention of the use in the course of business by an unauthorized third parties of an identical or similar sign for identical or similar goods or services which is likely to create a likelihood of confusion] must be interpreted in the sense that a third party does not make use of a sign which may be prevented by the holder under this article if:
- Advertisement containing the mark was not placed by the third party or on his behalf, or,
- The third party has expressly asked for the termination of the advertisement or mention of the product contained therein, and that his instructions were not respected by the service provider,
Nevertheless, the Court points out that the trade mark owner still have the ability, firstly, to demand the refund of undue economic advantage taken by the advertiser, and secondly to file action against the service provider in question. .