CJEU says ‘Mercedes-Benz’ adverts do not infringe Daimler’s TM
Car maker Daimler has failed to convince the Court of Justice of the European Union (CJEU) that a former partner company should be held responsible for allegedly trademark-infringing adverts, in a dispute centring on the ‘Mercedes-Benz’ mark.
In a decision handed down on Thursday, March 3, the CJEU said Hungary-based Együd Garage should not be held liable for the appearance of adverts that display the disputed mark as well as Együd Garage’s name.
The dispute, referred to the CJEU by Hungary’s Budapest Municipal Court, concerns online adverts that call Együd Garage an “authorised Mercedes-Benz dealer”.
Daimler owns a trademark for the term ‘Mercedes-Benz’ in Hungary.
Együd Garage is a company that sells motor vehicles and offers a repair service.
In 2007, a Daimler subsidiary called Mercedes Benz Hungaria agreed a contract with Együd Garage. Under the contract, which expired on March 31, 2012, Együd Garage was allowed to use the ‘Mercedes-Benz’ trademark and describe itself as an authorised Mercedes-Benz dealer.
During the contract Együd Garage ordered an advert from advertising services company Magyar Telefonkönyvkiadó Társaság (MTT) that described itself as an “authorised Mercedes-Benz dealer”. The advert was expected to be active from 2011 to 2012.
Following the termination of that contract, Együd Garage tried to end all use of the trademark and asked MTT to amend the advert so that it no longer made reference to it as an “authorised dealer”.
According to the judgment, Együd Garage also wrote to several other websites where the advert had appeared to request its removal.
But the adverts continued to be distributed online. When the words ‘Együd’ and ‘Garage’ were typed into Google, a string of results describing Együd Garage as an “authorised Mercedes-Benz dealer” appeared, the court added.
Együd Garage claimed it did not place any other adverts but that adverts are still appearing today contrary to its intention.
The company said it had been the victim of a “common commercial practice” whereby providers of online advertising services summarise adverts published on other sites without the knowledge or consent of the advertiser.
The Budapest court stayed the case and asked the CJEU whether the company that initially ordered an advert should be considered liable for trademark infringement.
In its judgment, the CJEU said publishing an advert on a website that refers to a trademark does constitute use of that mark by an advertiser which ordered it.
However, the court said the appearance no longer constitutes use by the advertiser when the operator of the site carrying the advert has been asked to remove it, even if the operator has not complied with the request.
The court added that the advertiser cannot be held liable for the acts of other website operators which, without its consent, have put the advert on their site.
Although the advert does not have to be removed, the court said, Daimler could claim reimbursement from Együd Garage for any financial benefit that may have been obtained.
