The whole matter began with one of the German law firms registering its name as a word trademark, i.e., “MBK Rechtsanwälte.” Interestingly, in its day-to-day operations and online, another firm from Germany, mk advokaten, also used the exact same word mark. This situation quickly led to a dispute between the legal entities, which ended in 2016. At that time, a German court issued a ruling prohibiting the use of the term “mbk” in the provision of legal services, under penalty of a fine. As a result, the mk advokaten law firm ceased using the disputed trademark. It seemed that the matter should end there, but that was not the case.
After some time, when searching for “MBK Rechtsanwälte” in internet search engines, one could find many advertisements and links to the competing firm, mk advokaten. As a result, MBK Rechtsanwälte stated that in this case, there was a violation of the prohibition ordered by the court in 2016 and again took legal action to punish the competing entity.
In response, mk advokaten pointed out that, in fact, even before the first ruling, it had published an advertisement containing the disputed trademark in an online directory of companies, but after the ruling became final, it withdrew its publication, thereby ending the dispute and respecting the ruling. Therefore, the firm cannot be held responsible for the circumstances in which other portals automatically replicate various advertisements.
To the detriment of the company, a line of case law has become established in Germany, according to which the entity that commissioned the publication of an advertisement infringing the law should not only remove it from the original portal on which it was published, but also check and take steps to remove such an advertisement from other websites. As a result, the court of first instance, which heard the case, agreed with MBK Rechtsanwälte, as the advertisements for mk advokaten that are visible online affect the benefits of this law firm, which translates into a continued infringement of protective law.
The law firm mk advokaten did not give up and appealed to the second instance. The appellate court, in hearing the case, stated that the matter was not straightforward and therefore referred the case to the Court of Justice of the European Union to determine whether German case law is consistent with EU law.
In the case, the CJEU focused, among other things, on the interpretation of Article 5(1) of Directive 2008/95/EC, which aims to harmonize the laws of the Member States relating to trademarks. As a result, the Court ruled that an entity that orders the publication of online content containing marks identical or very similar to competing trademarks is responsible for its content. However, if another, independent company or person independently reproduces publications infringing the intellectual property rights of others, the entity cannot be held liable. According to the CJEU, the use of another party’s trademark in this context must involve an active act, such as directing actions aimed at publishing the disputed advertisements.
Consequently, in its judgment of July 2, 2020 (C-684/19), the Court of Justice of the European Union ruled that an entity commissioning the publication of an advertisement on a website that infringes the trademark rights of another entity does not use a mark identical to that trademark in circumstances where the operators of other websites take over or reproduce that advertisement, publishing it on their own initiative and in their own name on other websites.
How will other companies react to such a ruling? Certainly, some companies may welcome the ruling, as it opens the door to consciously exploiting the regulations in order to infringe the intellectual property rights of competing entities.
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