Daimler AG v Együd Garage Gépjárműjavító és Értékesítő Kft.
Date: 2016-03-03
22


Secondly, the formulation of the question referred for a preliminary ruling seems to suggest that the referring court starts from the premiss that the goods and services offered by Együd Garage are identical to those for which that mark is registered. In that regard, it follows from the case-law of the Court that the use in advertisements of a car trade mark to inform the public that a third party carries out the repair and maintenance of authentic cars bearing that mark should be assessed, in principle, having regard to Article 5(1)(a), even where that mark has not been registered for that service (see, to that effect, judgment in BMW, C‑63/97, EU:C:1999:82, paragraphs 33, 34 and 37 to 39).
26


By application of Article 5(1)(a) of Directive 2008/95, the proprietor of a trade mark is entitled to prevent a third party from using, without his consent, a sign identical with that trade mark when that use is in the course of trade, is in relation to goods or services which are identical with those for which that trade mark is registered, and affects, or is liable to affect, the functions of the trade mark, including not only the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or service (‘the origin function’), but also its other functions such as, in particular, that of guaranteeing the quality of those goods or services or those of communication, investment or advertising (see, to that effect, judgments in L’Oréal and Others, C‑487/07, EU:C:2009:378, paragraph 58; Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraphs 49, 77 and 79, and Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraph 38).
27


However, where the signs in question and/or the goods or services for which those signs are used are only similar, the proprietor of the trade mark is entitled, under Article 5(1)(b) of Directive 2008/95, to prevent such use of the sign only if, due to a likelihood of confusion on the part of the public, that use affects, or is liable to affect, the origin function (see, in particular, judgment in Frisdranken Industrie Winters, C‑119/10, EU:C:2011:837, paragraph 25, and the case-law cited).
28


It should be pointed out that the Court has already held that 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, which may be prohibited by the trade mark proprietor unless Article 6 of that directive, concerning the limitation of the effects of the trade mark, or Article 7 of that directive, concerning exhaustion of the rights conferred by it, are applicable (see judgment in BMW, C‑63/97, EU:C:1999:82, paragraphs 42 and 45).
30


By ordering such an advertisement in the context of its commercial activity, 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 (see, to that effect, judgment in Interflora and Interflora British Unit, C‑323/09, EU:C:2011:604, paragraph 45, and case-law cited).
34


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 (see, by analogy, judgments in Google France and Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraphs 51 and 52, and in Frisdranken Industrie Winters, C‑119/10, EU:C:2011:837, paragraph 36), 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.
39


With regard, first, to the wording of Article 5(1), it must be noted, by way of example that, according to its ordinary meaning, the expression ‘zu benutzen’, ‘using’, ‘faire usage’, ‘usare’, ‘het gebruik’, ‘használ’, used respectively in the German, English, French, Italian, Dutch and Hungarian versions of that provision, involves active behaviour and direct or indirect control of the act constituting the use. However, that is not the case if that act is carried out by an independent operator without the consent of the advertiser, or even against his express will.
40


Secondly, as regards the scheme of Article 5 of Directive 2008/95, it should be noted that Article 5(3), which lists in a non-exhaustive manner the types of use which the trade mark proprietor may prohibit (see judgment in Google France et Google, C‑236/08 to C‑238/08, EU:C:2010:159, paragraph 65 and the case-law cited), refers exclusively to active behaviour on the part of the third party, such as that of ‘affixing’ the sign on the goods and their packaging or ‘using’ it in business papers and advertising, ‘offering’ the goods, ‘putting them on the market’ or ‘stocking’ them for those purposes, ‘importing’ or ‘exporting’ them or ‘offering’ or ‘supplying’ services under that sign.
41


Finally, with regard to the purpose of Article 5(1) of Directive 2008/95, it is clear from that provision that it is intended to provide the proprietor with a legal instrument allowing him to prohibit, and to prevent, any use of his trade mark by a third party without his consent. However, only a third party who has direct or indirect control of the act constituting the use is effectively able to stop that use and therefore comply with that prohibition.
42


In those circumstances, it must be observed that an interpretation of Article 5(1) of Directive 2008/95, allowing, in a situation such as that at issue in the main proceedings, the proprietor of the mark to prohibit the advertiser from making the use complained of, on the sole ground that such use could possibly provide a financial benefit to the advertiser, would misconstrue the purpose of that provision and conflict with the principle that no one can be legally obliged to do the impossible (impossibilium nulla obligatio est).