Trade marks in third party adverts: Daimler v Együd
This case concerns use of trade marks in advertisments which have been picked up by third parties and whether this use (with or without consent) constitutes trade mark infringement.
Background to the case
Daimler is a motor vehicle manufacturer that owns the international figurative mark protected in Hungary covering, amongst other things, motor vehicle parts.
Együd Garage Gépjármüjavító és Értékesítö Kft (Együd Garage), a Hungarian Company, sells motor vehicles and parts for repair and servicing. Daimler's subsidiary company and Együd Garage were parties to a contract for the supply of after sales services, which allowed Együd Garage to describe itself as an "authorised Mercedes-Benz dealer". Együd Garage ordered the publication on a particular website, of an advertisement describing it as an authorised Mercedes-Benz dealer for the period covering 2011-2012 from an online advertising services company, Magyar Telefonkönyvkiadó Társaság (MTT).
Following the termination of the contract between Együd Garage and Daimler's subsidiary, Együd asked MTT to amend the advertisement to remove the reference to it being an "authorised Mercedes-Benz dealer". In the meantime, several other websites had published online advertisements that referred to Együd being an authorised Mercedes-Benz dealer without its consent. Együd also wrote to the operators of these websites requesting removal of the advertisements.
The MTT advertisement was not removed and other online advertisements continued to appear and were presented when Google searches for "együd" and "garage" were carried out.
Budapest Municipal Court
Daimler brought an action in the Budapest Municipal Court for trade mark infringement seeking an order requiring Együd Garage to remove the advertisements at issue, to refrain from further advertisements and to publish a correction.
The Budapest Municipal Court referred a preliminary issue to the Court of Justice in the European Union (CJEU) which found that while the publication of an advertisement on a referencing website, referring to another person's trade mark, is attributable to the advertiser who ordered that advertisement, that advertiser cannot be held liable for the acts or omissions of such a provider who, intentionally or negligently, disregards the express instructions given by the advertiser to prevent use of the mark. In other words, since Együd Garage had expressly asked MTT to remove the advertisement, they could not be held liable for its continued use. Similarly, it was held that an advertiser cannot be liable for the independent actions of other economic operators who do not act by order and on behalf of the advertiser.
Együd Garage could not be held liable for the third party advertisements.
The court expressly said that this finding did not affect the possibility for a trade mark proprietor to claim appropriate reimbursement from an advertiser who has gained a financial advantage.
Alternatively a trade mark proprietor could take action against the operators of websites that infringe their trade mark rights.
This case demonstrates how increasing difficult it is becoming for trade mark owners to monitor and control use of their trade marks in online advertising.
Case details at a glance
Jurisdiction: European Union
Decision level: Court of Justice
Parties: Daimler AG v Együd Garage Gépjármüjavító és Értékesítö Kft
Date: 03 March 2016
Full decision: http://dycip.com/daimlervegyud