Online Advertising and TM Owners’ Responsibility

While reviewing a case related to TM registration in Germany & online advertising, the CJEU faced a dilemma: Should a company be held responsible for illegally using a TM on the Internet if the same TM is also used by 3rd parties? In other words, should the original offender be held ultimately responsible for all subsequent actions of 3rd parties related to the illegal use of a TM in Germany?

Illegal Use of TMs Online: Setting a Precedent

Back in 2016, MBK Rechtsanwälte, a German law firm owning a German TM, decided to file a TM copyright infringement claim with the CJEU. The claim was filed against Mk Advokaten, another law firm from Germany that used the "mbk rechtsanwälte" name & the identical Dutch name "mbk advokaten".

Following the review of the claim, a court in Düsseldorf ruled that Mk Advokaten be forbidden from using the "mbk" abbreviation. However, there were several other websites using the “mbk rechtsanwälte” name for advertising Mk Advokaten's legal services. MBK Rechtsanwälte decided to initiate litigation in Germany & filed another suitcase against Mk Advokaten demanding that the latter pay a fine for violating its TM rights. Mk Advokaten refuted the allegations saying that it only used the name to register a company in Germany in Das Örtliche online directory.

In compliance with an earlier verdict of a Dusseldorf-based court, it did remove  the "mbk" abbreviation from its name. And since there were no other obligations to fulfil, the firm didn’t require other website operators to remove an advertisement containing the mbk’ abbreviation from their web resources.

However, because it was established that the advertisement infringed 3rd parties’ rights, the company that ordered the advertisement had to not only remove it from its website but also make sure that operators of other websites refrained from placing the advertisement on their web resources as well. And since Mk Advokaten neglected to do that, it had to pay a fine for failing to do enough to remove the ads. It should be noted, though, that Mk Advokaten didn’t agree with the verdict & filed an appeal.

CJEU’s Solution

If you’re interested in IPR protection in Germany you should keep in mind that there’s a difference between an authorized & unauthorized use of a TM. According to EU legislation:

• an original violator can’t be held responsible for actions of 3rd parties if the latter don’t have direct or indirect relations with them or act on their own initiative;
• “use” stands for actively controlling something (directly or indirectly).

The CJEU affirmed that national courts must assess whether the “use” was the result of Mk Advokaten's actions & whether other website operators were advertising on its behalf. In the absence of such evidence, MBK Rechtsanwälte's claim against Mk Advokaten was unfounded.