By ordering, in the context of its commercial activity, from a service provider, an advertisement for the purposes of being published on a website, the advertiser made ‘use’ of the mark ‘in the course of trade’ and ‘in relation to goods or services’ which it offers to its customers, which use for advertising purposes, moreover, is expressly provided for in Article 5(3)(d) of Directive 2008/95. Such use, where it is made without the consent of the proprietor of the mark, is liable to affect the origin function of the mark, since the advertisement suggests the existence of an economic link between that advertiser and the proprietor.

The use of a trade mark by a third party, without the proprietor’s authorisation, in order to inform the public that that third party carries out repairs and maintenance of goods covered by that trade mark or that he has specialised, or is a specialist, in such goods constitutes, in certain circumstances, a use of that mark for the purposes of Article 5(1)(a) of Directive 2008/95, to approximate the laws of the Member States relating to trade marks, which may be prohibited by the trade mark proprietor unless Article 6, concerning the limitation of the effects of the trade mark, or Article 7, concerning exhaustion of the rights conferred by it, are applicable.

Article 5(1)(a) and (b) of Directive 2008/95, to approximate the laws of the Member States relating to trade marks, must be interpreted as meaning that a third party, who is named in an advertisement on a website, which contains a sign identical or similar to a trade mark in such a way as to give the impression that there is a commercial relationship between him and the proprietor of the trade mark, does not make use of that sign that may be prohibited by that proprietor under that provision, where that advertisement has not been placed by that third party or on his behalf or, if that advertisement has been placed by that third party or on his behalf with the consent of the proprietor, where that third party has expressly requested the operator of that website, from whom the third party ordered the advertisement, to remove the advertisement or the reference to the mark contained therein.

While the publication online of an advertisement on a referencing website, referring to another person’s trade mark, is attributable to the advertiser who ordered that advertisement and upon whose instruction the operator of that site, as service provider, acted, that advertiser cannot be held liable for the acts or omissions of such a provider who, intentionally or negligently, disregards the express instructions given by that advertiser who is seeking, specifically, to prevent that use of the mark. Accordingly, where that provider fails to comply with the advertiser’s request to remove the advertisement at issue or the reference to the mark contained therein, the publication of that reference on the referencing website can no longer be regarded as a use of the mark by the advertiser.

Nor can an advertiser be held liable for the independent actions of other economic operators, such as those of referencing website operators with whom the advertiser has no direct or indirect dealings and who do not act by order and on behalf of that advertiser, but on their own initiative and in their own name.

In both of those situations, the proprietor of the mark is not entitled, under Article 5(1)(a) or (b) of Directive 2008/95, to take action against the advertiser in order to prevent him from publishing online the advertisement containing the reference to its trade mark.

(see paras 34, 36, 37, 44, operative part)