Based on a request for a preliminary ruling, the Court of Justice issued today an interesting decision concerning the situation of a former contractual partner, no longer authorized to use a trademark and who has explicitly requested search engine operators or other Internet sites to remove advertising referring to that mark.
Where the advertiser has expressly requested the operator of the site, from whom he had ordered the advertisement, to remove it and the operator has disregarded that request, the trademark proprietor is not entitled to require, by means of legal action against the advertiser, that publication of the advertisement online be terminated. Impossibilium nulla obligatio est.
Indeed, the omission of such an operator cannot be attributed to an advertiser who seeks precisely to avoid unauthorized use of the trademark in question.
Moreover, the advertiser cannot be held liable for the acts and omissions of other website operators who, without his consent, have put the announcement on their own site.
The trademark owner may nevertheless claim reimbursement from the advertiser for any financial benefit that he may obtain from advertisements still online and bring proceedings against operators of websites that infringe the rights connected with its trademark.
For the full details of the case see C-179/15:Retour aux articles