Judgment;Summary — ECLI:EU:C:2020:519
Date: 2020-07-02
Language of the case: German
Court formation: Tenth Chamber
Subject matter: Intellectual, industrial and commercial property
Procedure: Reference for a preliminary ruling
Origin: Germany

Translation C-684/19 — 1 
Case C-684/19 
Request for a preliminary ruling 
Date lodged: 
17 September 2019 
Referring court: 
Oberlandesgericht Düsseldorf (Germany) 
Date of the decision to refer: 
9 September 2019 
Appellant: 
mk advokaten GbR 
Respondent: 
MBK Rechtsanwälte GbR 
  
[...] 
OBERLANDESGERICHT DÜSSELDORF (HIGHER REGIONAL COURT, 
DÜSSELDORF) 
ORDER 
In the case of 
mk advokaten GbR, [...] Kleve, 
debtor and appellant,  
[...] 
v 
MBK Rechtsanwälte GbR, [...] Mönchengladbach, 
creditor and respondent,  
[...] 
EN 
REQUEST FOR A PRELIMINARY RULING OF 9. 9. 2019 — CASE C-684/19 
 
2  
The 20th Civil Chamber of the Oberlandesgericht Düsseldorf (Higher Regional 
Court, Düsseldorf) [...] on 9 September 2019 [Or. 2]  
ordered as follows: 
I. 
The proceedings are stayed. 
II.  
Reference is made by the Higher Regional Court, Düsseldorf, to the Court of 
Justice of the European Union for a preliminary ruling on the following question 
concerning the interpretation of Directive 2008/95/EC of the European Parliament 
and of the Council of 22 October 2008 to approximate the laws of the Member 
States relating to trade marks (OJ 2008 L 299, p. 25) (‘the Directive’): 
Does a third party referred to in an entry published on a website that contains a 
sign identical to a trade mark ‘use’ that trade mark, within the meaning of 
Article 5(1) of the Directive, if the entry was not placed there by the third party 
itself, but was taken by the website’s operator from another entry that the third 
party had placed in infringement of the trade mark?  
Grounds 
I. 
1  The creditor, a partnership of lawyers, operates under the name ‘MBK 
Rechtsanwälte’; it is also the proprietor of German word mark 30 2014 035 913 
‘MBK Rechtsanwälte’, registered, inter alia, in respect of ‘advisory services in 
legal disputes; advisory services on points of law; services of a lawyer; services’.  
2  The debtor, based in Kleve (Lower Rhine) and also a partnership of lawyers, 
temporarily operated under the name ‘mbk rechtsanwälte’ or ‘mbk advokaten’. 
The creditor took the view that this amounted to an infringement of its trade name 
and trade mark and obtained an enforceable agreed judgment of the Landgericht 
Düsseldorf (Regional Court, Düsseldorf) of 17 October 2016 prohibiting [Or. 3] 
the debtor from offering legal services under the name ‘mbk’ in the course of 
trade, on pain of incurring statutory penalties.  
3  The creditor subsequently discovered that, notwithstanding the enforceable agreed 
judgment, an entry of ‘mbk Rechtsanwälte’ in google.de still displayed several 
hits referring to the debtor. These concerned an entry on ‘kleve-
niederrhein.stadtbranchenbuch.com’ and on the rating platform ‘cylex.de’. In its 
defence, the debtor submits that it did not commission those entries. It stated that 
it had commissioned just one entry under the name ‘mbk Rechtsanwälte’ in the 
‘Das Örtliche’ telephone directory — which also appears on the internet — from 
which those entries had been taken by third party websites without its knowledge 
MK ADVOKATEN 
 
3 
or intention. It submits that it immediately removed the entry from ‘Das Örtliche’. 
It was not, in its view, obliged to take any further steps. 
4  In the contested order, the Regional Court imposed a fine on the debtor on the 
application of the creditor pursuant to Paragraph 890(1) of the 
Zivilprozessordnung (German Code of Civil Procedure). In its reasoning it stated 
that, as a result of the judgment, the debtor was obliged to remove not only the 
entry which it had itself commissioned, but also all entries in the usual internet 
directories which contained the contested sign, since those directories also 
benefited the debtor financially and were based on the entry that it had directly 
commissioned. 
5  It is against that order that the debtor has brought the present appeal.  
II. 
6  The decision turns on the interpretation of Article 5(1) of the Directive — 
applicable ratione temporis.  
7 1. The creditor has, it is true, asserted a claim not only on the basis of its trade 
mark, but also, first and foremost, on the basis of its trade name. Unlike registered 
trade marks, trade names are not regulated by EU law. In any event, as regards the 
issue raised in the present case, national law contains identical rules for trade 
marks and for the right to a trade name and those rules must be interpreted in the 
same way. [Or. 4] 
8  Paragraph 14(2) of the Markengesetz (German Law on Trade Marks) is worded as 
follows: 
Third parties shall not, without the consent of the proprietor of the trade mark, in 
the course of trade 
1. 
use a sign which is identical to the trade mark in relation to goods or services 
which are identical to those for which the trade mark is protected, 
2. 
use a sign where, because of its identity with or similarity to the trade mark and 
the identity or similarity of the goods or services covered by the trade mark and 
the sign, there exists a likelihood of confusion on the part of the public, including 
the likelihood of association between the sign and the trade mark. 
Paragraph 15(2) of the Law on Trade Marks is worded as follows: 
Third parties shall be prohibited from using the commercial designation or a 
similar sign in the course of trade without authorisation in a manner liable to cause 
confusion with the protected designation. 
REQUEST FOR A PRELIMINARY RULING OF 9. 9. 2019 — CASE C-684/19 
 
4  
The first sentence of Paragraph 890(1) of the Zivilprozessordnung (German Code 
of Civil Procedure) is worded as follows: 
If a debtor fails to comply with his obligation not to act ..., he shall, on application 
by the creditor, be sentenced by the court of first instance ... to a fine. 
9  2. Where a debtor has infringed the trade mark or trade name of a third party by an 
entry (first entry) on the internet, he shall not only be obliged to remove that first 
entry. Rather, according to the settled case-law of the German courts, [...] the 
debtor must check the internet by means of the usual search engines to determine 
whether third party websites have taken that entry, albeit without the debtor’s 
consent, and must thereafter make at least a serious attempt to remove it. That 
view is justified by the fact that those subsequent entries are attributable to the 
debtor’s unlawful first entry and also benefit the debtor financially. It is therefore 
not the aggrieved party but the infringing party who must bear the risk [Or. 5] of 
entries being taken by other websites without permission being obtained. The 
infringing party must therefore also bear the expense and efforts associated with 
their removal. Taking into account that case-law, the present Chamber would have 
to dismiss the present appeal.  
10  It is unclear whether this is compatible with the case-law of the Court of Justice 
concerning trade marks. In its judgment of 3 March 2016 (C-179/15 — Daimler 
AG v Együd Garage Gépjárműjavító és Értékesítő Kft; EU:C:2016:134), the Court 
of Justice ruled that subsequent entries do not constitute use within the meaning of 
Article 5(1) of the Directive. In its reasoning it stated that use requires active 
behaviour; the party who commissioned only the first entry on a particular website 
is not liable for the actions of third parties.  
11  If that case-law is applied to the instant case, the present Chamber would have to 
vary the Regional Court’s order and refuse the application for imposition of a fine. 
12  In Germany there has been little discussion of the consequential effects of the 
Court of Justice’s decision. It is not clear to the Chamber whether the findings of 
the Court of Justice relate only to the particular situation at the time, in which the 
first entry was originally lawful — due to the fact that, at the time, permission had 
been given by the trade mark proprietor as part of a collaboration between the 
parties — and became unlawful only as a result of a subsequent event (the 
termination of that collaboration and consequent withdrawal of the permission 
granted). By contrast, the first entry made by the debtor constituted, from the 
outset, an infringement of the creditor’s rights.  
[...]