Abstract

In the case under discussion the CJEU interpreted Art. 5.1 letters a) and b) of Directive 2008/95.

The CJEU upheld its earlier caselaw line according to which the third party use in online advertising of signs identical to registered trademarks without consent of the proprietor may be prohibited by the proprietor if such use infringes one of the functions of the trademark, in particular the function of origin thus creating a misleading impression of a business relationship between that third party and the trademark proprietor.

At the same time, in the Mercedes Benz case the CJEU interpreted the term “use” indicating that the use of a thing by a third party requires active conduct of such a third party. The CJEU raised that Art. 5.1 letters a) and b) of Directive 2008/95 must not be construed in such a way that the proprietor may prohibit a third party to use a trademark by publishing information online when that party has no influence over the publication of such information, and what is more – it has ineffectively made efforts to stop that practice.