Editor's note: Daimler AG company-owned "MERCEDES-BENZ" The ownership of the graphic trademark, Designated for use in motor vehicle parts and other commodities. Együd Garage The company signed an agreement with the company, Relevant graphic logos and words may be used in advertising campaigns, And directed a company to use it. After termination of agreement, The company did not remove the advertisement as requested, Daimler AG The company then filed a trademark infringement lawsuit.

[background] Daimler AG company-owned "MERCEDES-BENZ" The ownership of the graphic trademark, Designated for use in motor vehicle parts and other commodities. 2007 years, Daimler AG Subsidiary of a company Mercedes-BenzHungaria Kft. Company and Együd Garage The company signs after-sales service agreement. Együd Garage The company is a motor vehicle sales company, At the same time for the sale of motor vehicles to provide maintenance and related services. In accordance with the agreement, Együd Garage The company can use "MERCEDES-BENZ" Graphic trademark, And use it in its advertising campaigns "felhatalmazott Mercedes-Benz szerviz" (Mercedes-benz authorized dealer) word. The agreement is made in 2012 End of year. During the validity of the said agreement, Együd Garage The company instructs a company in www. telefonkonyv. hu Advertise it on the website, Display in advertisement "Mercedes-benz authorized dealer" word. The agreed advertising period is 2011 Year to year 2012 years. Upon termination of the above after-sales service Agreement, Együd Garage The company notified advertising agencies and several web site operators, To remove all online advertising that identifies it as an authorized Mercedes-Benz dealer. But they did not remove the ads as requested. Daimler AG The company then filed a trademark infringement lawsuit. Együd Garage Company defense, The online advertising campaign issued under its direction is only www. telefonkonyv. hu The ads on the website, The rest of the ads were posted without its direction. In view of this, The court in Budapest decided to suspend the proceedings, And asked the European Court of Justice (European Court of Justice) Make a preliminary determination on the following issues: " "First Council Directive on the harmonization of trademark legislation in the Member States (The first 89/104/EEC No) " (Have been "European Parliament and Council No 2008/95/EC Number instruction" replace, Translator's note) The first 5. 1 article (b) Should be understood as, The trademark owner shall have the right to prohibit an advertiser who advertises an online advertisement offering the same services as the class of goods and services specified in its registered trademark, Use in advertising a mark that is identical to its registered trademark or similar enough to cause confusion, The reason is that the public may misperceive the advertiser and the registered trademark owner there is a legitimate business relationship, Although the AD was not posted on the Internet directly or at the direction of the advertiser, Or that the advertiser has taken all reasonable steps to request that the advertisement be removed, But the publisher did not remove it as required? "

[conclusion] Before answering the above questions of the court of Admissibility, The European Court of Justice first clarified the thrust of the question and reformulated it as: " "Directive of the European Parliament and of the Council on the harmonization and harmonization of the laws of the Member States on trademarks (The first 2008/95/EC No) " The first 5. 1 article (a) and (b) Should be understood as, An advertiser of an online advertisement uses the same or similar mark as a registered trademark in the online advertisement, And make the public misidentify the advertiser and the registered trademark rights between the existence of commercial contacts, The registered trademark owner has the right to request the above advertiser to stop the use of the above, Although the online advertisement is not posted on the Internet by the advertiser directly or at the direction of others, Or that the advertiser has taken all reasonable steps to request that the advertisement be removed, But the publisher did not remove it as required? " subsequently, The European Court of Justice briefly explained the right "European Parliament and Council No 2008/95/EC Number instruction" The first 5. 1 article (a) and (b) The understanding of the clause. The European Court of Justice confirmed after examining the facts of the case, Originally, though, the site operators were following the advertiser's instructions to place ads on their sites that used other people's registered trademarks, However, operators receive clear instructions from advertisers, Disobey or ignore the instruction, Lead to infringement of trademark rights involved, Therefore, the advertiser should not be liable for the consequences caused by the operator's violation or disregard of its instructions. Therefore, European court of justice ruling, The operator did not follow the advertiser's instructions to remove the advertisement in question or the information involving the registered trademark in the advertisement, Can not be identified as the advertiser used the trademark involved. Advertisements posted on other sites without the advertiser's knowledge or consent, The European Court of Justice held that, For other commercial operators that do not have a trading relationship with the advertiser without the consent or instruction of the advertiser and take the initiative to independently publish advertisements, Advertisers should not bear the consequences. Justification section, The European Court of Justice explained it first "European Parliament and Council No 2008/95/EC Number instruction" The first 5. 1 Bar under different language versions "use" ( "zu benutzen" ——German, "using" ——English, "faire usage" ——French, "usare" ——Italian, "het gebruik" ——Danish and "használ" ——Hungarian) The usual sense of the word: Acts that actively use or constitute use under their direct or indirect control. The European Court of Justice held that, The act of an independent operator publishing an online advertisement without the consent of the advertiser, Do not belong to "positive" behavior, In fact, This behavior of the operator violates the clear intention of the advertiser. The European Court of Justice also noted, "European Parliament and Council No 2008/95/EC Number instruction" The first 5. 3 List the acts which the trademark owner has the right to prohibit, Only mention "positive" behavior (For example "label" , "Use of trademark" , "Promise to provide" And so on) . Finally, The European Court of Justice stated that "European Parliament and Council No 2008/95/EC Number instruction" The first 5. 1 The legislative purpose of the article is, To provide legal remedies for trademark owners, Allows a trademark owner to prohibit unauthorized use of his trademark by others. however, Only when the act of using occurs under the control of a third person, That makes it possible to ban it. Therefore, The European Court of Justice held that "European Parliament and Council No 2008/95/EC Number instruction" The first 5. 1 Article shall be read as, In the circumstances of this case, If it is found that the trademark owner has the right to prohibit the advertiser from using the trademark in the manner described in this case, Is contrary to the legislative essence of this article, At the same time with "An obligation that is impossible to perform is void (impossibilium nulla obligation est, Latin– Translator's note) " This principle is in conflict. For the above reasons, The European Court of Justice's answer to the Court of Admissibility's question is: " "Directive of the European Parliament and of the Council on the harmonization and harmonization of the laws of the Member States on trademarks (The first 2008/95/EC No) " The first 5. 1 article (a) and (b) (1) , Although a network advertisement uses the same or similar logo as a registered trademark, And make the public misunderstand that there is a commercial relationship between the advertiser specified in the advertisement and the registered trademark owner, However, because the network advertisement is not directly by the advertiser or directed others to publish on the Internet, Or the original advertiser directly or instructs others to publish the advertisement after the registered trademark owner consent, Although the term of the trademark license expires later, But the advertiser has specifically asked the site operator to remove the AD or any reference to a registered trademark, Therefore, The advertiser cannot be found to have exercised any use prohibited by this clause. "

[comment] Although the European Court of Justice noted in its ruling in this case, The ruling does not affect trademark owners' demands under the laws of member States for the advertiser to return any undue profits, Nor will it affect the trademark owner to take legal measures against the website operator involved, but, The measures that the trademark owner can take are bound to be limited.

compile: Liu Dan, The source of Aisabri Legal Counsel: Esabaril (ELZABURU) Intellectual property rights