Cyprus: Trade Mark Infringement On The Internet: Current Issues And Concerns In Europe (Sponsored Links, Search Engines And Shopping On The Internet) - Part 1

ABSTRACT

The evolution and development of the Internet has assisted the appearance of new forms of advertising and trading. Advertising systems such as Google AdWords and online marketplaces such as eBay have been created. These systems have been in a great extend incriminated as facilitating the infringement of trade mark rights on the Internet. This paper discusses the operation and functioning of these new online business models and examines the current developments concerning trade mark law, within the European Union under the light of recent case law of the European Court of Justice.

In Chapter One the basic relevant concepts are discussed. Namely the whole concept, function and effect of trade marks is examined with reference to respective case law and to Trade Mark Directives 89/104 and 2008/95/EC, as well Regulation 40/94. Moreover the concepts of sponsored links, keyword advertising and electronic marketplaces are introduced.

Chapter Two offers a closer insight to keyword advertising and more specifically to the Google AdWords system. The function and operation of the said system is discussed together with possible trade mark infringement concerns. A brief discussion follows concerning the case law of the national courts throughout Europe, to conclude with a thorough analysis and assessment of the famous ECJ's ruling in the Google Awords case.

In Chapter Three the functioning and possible trade mark infringement action of online marketplaces and other auction sites is examined. The operation of eBay is scrutinized and discussed with reference to the recent judgment of the ECJ in the L'Oréal v. eBay case. The effects and possible impact of the said ECJ decision are also analyzed.

Furthermore it will be evaluated whether the above mentioned rulings of the ECJ have altered significantly the position of either trade mark proprietors or of the operators of the respective websites, to finally conclude if the respective situation within Europe has been clarified or if further case law is in fact required.

I. INTRODUCTION

The evolution and development of the internet has created various new forms of advertising and trading. These forms have been at a great extent incriminated as facilitating the infringement of trade mark rights on the internet.

It is a fact that internet search engines are relying at a great extent on the sale of advertising to provide a stable revenue stream. Today's trend is to tailor such advertising to the needs of the potential internet user and more specifically to the keywords used by an individual user in an internet search engine.

This tactic, commonly known as 'keyword advertising', is now considered to be the main revenue stream for most of the internet search engine companies. Google, for example, derives as much as 98% of its advertising revenue from keyword triggered ads.1 Nevertheless, keyword advertising raises concerns of potential violation of trade mark rights.

Although there is no evidence that the said activity alone causes confusion, a relevant issue can be raised when the keyword triggering the sponsored search result might be a protected trade mark belonging to a different undertaking than the one featured in the triggered advertisement.

Furthermore, electronic marketplaces and other auction sites are widely used today by million internet users all over the world in order to facilitate the sale and purchase of various products or services. Yet the use of online shopping sites can create issues since they have been considered as playing an active role in promoting the sale of counterfeit goods and thus infringing trade mark rights.

Hereunder an attempt is made to identify the current issues regarding violation of trade mark rights on the internet, to define the concept of trade marks, adwords, sponsored links, electronic marketplaces, as well as any other related concepts, to investigate and assess the function of keyword advertising and online auction and marketplace sites and finally to analyze whether the said methods of advertising and trading can potentially infringe trade mark or other intellectual property rights under the light of the recent case law of the European Court of Justice.

II. CHAPTER ONE: BASIC CONCEPTS AND NOTIONS

II. 1. Trade Marks: Concept, Function and Effects

Trade Marks are valuable; they promote innovation, they play an important role within an economic market and their existence is linked with various economic activities, such as the sale of products and the provision of services. Moreover, trade marks offer exclusive rights to their respective owners.

They are usually referred to as symbols, words, designs or any other signs, capable of graphic representation and they are utilized in order to distinguish the goods or services offered by one undertaking from those manufactured, marketed and sold by the competitors of the relevant undertaking.

The concept of a trade mark is not in fact common throughout the legislations of the different European states. However within the European Union (hereinafter referred to as 'EU'), this was resolved due to the harmonization and the approximation of national laws affected by the Trade Mark Directive 89/104.2 This Directive has been recently repealed and replaced by Directive 2008/95/EC,3 which at a great extent contains similar provisions to those of Directive 89/104.

Both the Trade Mark Directives, as well as the Community Trade Mark Regulation 40/944 do not give an exact definition of what constitutes a trade mark. They merely define which signs can be registered as trade marks.

More specifically the Community Trade Mark Regulation in Article 4 determines what types of signs can be registered as community trade marks (hereinafter referred to as 'CTM'). The said article sets two basic requirements that have to be fulfilled in order for a sign to be registered as a CTM; the sign must be able to be represented graphically and it must be capable of distinguishing the goods or services of one undertaking form those of another. For a sign to be determined whether it can be registered as a trade mark or not, it is not necessary to take into account the specific products or services that will bear it. The matter must be judged in the abstract. 5

It is important to note here that the requirement of graphic representation administers legal certainty to the trade mark registration process, since through this representation it is determined exactly how the appearance and form of the trade mark in question will be and both authorities and public are informed about the particular sign that seeks registration. The authorities need to be informed in order to investigate whether the respective sign can be registered; while public knowledge is important in cases of conflict of the said trade mark with a different trade mark.

Furthermore the sign must not be devoid of any distinctive character, in order to be registered as a trade mark. This means that at least form the relevant public's point of view, the sign must not be commonly used in trade concerning the relevant goods and services. The European Court of First Instance (hereinafter referred to as the 'CFI') has confirmed the above, in its Streamserve judgment,6 where the following were stated,

...the distinctive character of a sign can be appraised only for reference to the goods or services for which registration is sought.

This is better understood through an example. The trade mark 'Streamserve' was found to be devoid of any distinctive character for data processing equipment, since the term implies a method for transferring digital data from a server; thus it is very closely related to the products in question and hence is not capable to distinguish them from competitive products. Nonetheless the matter would be entirely different if the sign 'Streamserve' was intended to be a trade mark for candy bars!

As a principle – European Law – does not preclude any shapes, visible or non – visible, from being registered.

The European Court of Justice (hereinafter referred to as the 'ECJ') has taken the concept of which signs can constitute trade marks, one step further. It has interpreted Article 4 of the Community Trade Mark Regulation in a way that even smells, sounds and colours can be registered as trade marks, provided of course that they can be represented graphically. Particularly in the Sieckmann case,7 which concerned an olfactory mark, the ECJ went on and set out seven criteria, which the graphic representation must fulfill; namely it must be (i) clear, (ii) precise, (iii) self- contained, (iv) easily accessible, (v) intelligible, (vi) durable and (vii) objective.

Following the Sieckmann case, there was a strong debate suggesting that the court setting those seven criteria – characterized by some as illogical – left no way at all for non–visual marks to satisfy the requirements and to be registered, even if they might be capable to fulfill the function of a trade mark.8

The view is submitted that the ECJ set a very high standard for the registration of smells, sounds and colours as trade marks, since the seven Sieckmann criteria seem very difficult to fulfill. However the essential point to note is that it has not entirely rejected the possibility of such marks to register. This is also affirmed by the opinion of the Advocate General in the Shield Mark case, which concerned a sound mark. There A. G. Ruiz – Jarabo Colomer stated that some categories of sound marks – those capable of being reduced to musical notation – can be registered as trade marks.9 Again non–visual marks are not being completely excluded from registration.

On the other hand, the Office for Harmonization in the Internal Market (hereinafter referred to as 'OHIM') has given a very wide interpretation of the said Article 4 and has allowed the registration of 'The Smell of Fresh Cut Grass' for tennis balls.10 Under the view of the above ECJ's decision in the Sieckmann case, most probably the verbal explanation of the mark would not have been adequate to fulfill the graphic representation requirement. This is proven when viewed under the light of another OHIM decision. Namely in the case regarding the Institute pour la protection des Fragrances (I.P.F.)'s Application11 the office followed the Sieckmann criteria and rejected the registration of an olfactory mark represented by a colour matrix and a verbal description; it supported that is not bound by its own earlier – the smell of fresh cut grass- decision.

The CFI in its judgment Eden v. OHIM,12 which concerned the application for registration of an olfactory mark, namely the smell of ripe strawberries, has confirmed the ruling in the Sieckmann case. Although the Court repeated that it is possible for smells to be registered as trade marks, it rejected the application supporting that the graphic representation criteria was not fulfilled. This decision is a validation not only that the European Courts have been consistent with how they view trade marks within the European Community, but also that they have set their own individual and unique course and approach regarding trade marks.

In regard to three-dimensional shapes the ECJ has stated that, a three-dimensional shape of product sign may in principle constitute a trade mark.13 Article 3 (1) (e) of the Trade Mark Directive 2008/95 however excludes from registration shapes, which result from the nature of the goods themselves, which are necessary to obtain a technical result or which give substantial value to the goods. These conditions are set mainly in order not to distort the system of patent protection, since in case that a technical device could have been protected as a trade mark, the protection of such a device as a patent would not be necessary.

Furthermore the above exclusion is sensible since in the absence of the said requirement, the danger of the creation of monopoly rights within the respective market, would be visible. Imagine if a technical characteristic that facilitates the better functioning of a specific product, is registered as a trade mark. In case such a thing happens then a possible competitor shall be immediately precluded from the relevant market.

Unlike this, shapes that are easily identifiable and have become distinctive to the wider public and have nothing to do either with the nature of the goods themselves or with the technical result obtained by the product can become trade marks. For example a specific shape of a chocolate bar can be registered as a trade mark; i.e. the Toblerone chocolate.

A few years back the registration of shape marks was something strange and unknown to some Member States, especially before the introduction of the Trade Mark Directive 89/104.

A characteristic example of this is the Coca- Cola case14 in England, where the House of Lords rejected the registration of the well-known bottle suggesting that it was an attempt to alter intellectual property law into a source of monopoly.

A trade mark's function has always been a favorite subject for discussion. Some commentators, academics and lawyers support that the function of a trade mark has two sides; the modern approach suggests that the said function is to indicate quality. On the other hand, the function of a trade mark was traditionally considered to be the indication of origin of the goods or services.

The functions of a trade mark are not longer perceived by business and economists as limited to the signification of origin and the identification of the goods or services to which the mark is attached, but also to indicate the quality of the goods and promote them in the minds of consumers. 15

It is arguable whether the above view applies, since a trade mark must first acquire the consumers' confidence in order to be able to fulfill any possible "guarantee" functions. This presupposes that the attached product or service must have some features that consumers know and trust. For a product to gain the trust of the public, long usage is sometimes required. A trade mark illustrates the linkage of a product to a manufacturer; this occurs immediately with the production or the circulation of the goods concerned.

Thus, it is submitted that the essential function of a trade mark is to indicate origin of the goods or services related to it. This does not signify the physical origin. It simply denotes the trade origin. A single undertaking controls the production of products bearing the trademark, wherever these products are manufactured. This undertaking accepts economic responsibility for the quality of such products. Hence the modern function of a trade mark is actually inherent in its traditional function.

This is the reason why the European Court has in several occasions held that owners of a trade mark which is protected by a specific legislation cannot rely on that legislation to prevent the importation or marketing of products bearing their trade mark, provided that the said products were manufactured with the owners' consent or under their license.16

On the other hand, amongst the various academic and economic opinions concerning the function of the trade marks, someone encounters the view that nowadays, due to conditions such as the growing significance of retail trade, the vast development of services, as well as the evolving of lifestyle marks, the trade mark serves an additional function; namely the advertising or the goodwill function. In the words of Charles Gielen, the trade mark is a messenger.17 This implies that the trade mark operates in a way to promote the goods and services that bear it and also to convey information concerning the related products.

The above view is not supported by the present essay. It is possible for a trade mark to bare information about the product's or the service's qualities and characteristics, but this does not necessarily suggest that the trade mark has an a priori advertising function. It is more likely that a trade mark acquires an advertising function when the said trade mark gains sufficient fame and reputation.

It is common, as well as desirable by manufacturers and traders, for a trade mark through its utilization, to become a 'messenger', promoter of the particular product that bears it. The use of a specific trade mark accommodates consumers to identify their preferred products. A trade mark could stimulate the consumers' attention and provide them with information of any kind. Thus consumers through the trade mark recognize goods and services.

However the above is a characteristic that the trade mark may acquire through its usage. Imagine a newly manufactured product, bearing a recently registered trade mark, which is unknown to the wide public. Such mark contains no advertising function, since the consumers do not identify it or associate it with a product of their preference.

Nevertheless famous or well-known trade marks, such as the 'Nike Swoosh' or the Louiss Vuitton 'LV' due to their increase reputation can be considered as serving an advertising function.

The ECJ in its Arsenal Football Club judgment in 2002 reaffirmed the concept and content of the function of a trade mark:

The essential function of a trade mark is to guarantee the identity of origin of the marked goods or services to the consumer or end user by enabling him, without any possibility of confusion, to distinguish the goods or services from others which have another origin.18

I would also suggest that the sole essential function of the trade mark, is to guarantee the identity of the origin of products and services and by this to distinguish them from other goods.

The essential function of the trade mark, as an indication of origin, accommodates the interests of both the proprietor and the consumer. On the one hand the trade mark proprietor can be protected, by prohibiting any use by its competitors or other third parties of an identical or similar sign. On the other hand the consumer's interests are protected, because they are accommodated in their choice of suitable products, without any possibility of confusion. Thus the trade mark owners enjoy a zone of exclusivity concerning their acquired trade mark rights and the consumers are able to distinguish the goods and services they want to purchase.

Apart from their function, trade marks are important within every economy and every market, since they confer benefits to both producers and consumers.

First of all, a trade mark is a bearer of an absolute and exclusive right. With the recognition of a sign as a trade mark, monopoly rights are created. The trade mark owner acquires the ability to apply the trade mark right's power in two manners: in a positive and in a negative way. The positive power of a trade mark consists of the right of the proprietor to exclusively use the trade mark in transactions. Additionally the trade mark owners can exclude third parties from using their signs, thus applying their power in a negative manner.

The European Court has defined that the specific subject-matter of trade mark rights consists in protecting the proprietor of the trade mark against a risk of confusion, such as to allow third persons to take unlawful advantage of the reputation of the proprietor's goods.19

Moreover the trade mark is in fact a property right, a business asset of high value that can be acquired and assigned like any other asset. The trade mark owners can thus economically and commercially exploit their signs by licensing them, selling them or transferring their rights to third parties. The assignment of a sign does not even require the transfer of a specific business along.

Consequently one of the benefits of a trade mark is the capability it confers to the its proprietor to take advantage of the relevant trade mark rights and to gain economic benefits.

In addition, trade marks place the foundations for a dynamic competitive market.

Trademarks set the stage for vigorous competition among firms through effective competitive merchandising. 20

It is hereby submitted that firms utilize trade marks in a way to compete one another. Trade mark rights promote in fact healthy competition, since they provide a base for each proprietor - producer to gain a substantial part of a specific market. Every firm, through its trade mark – and through effective merchandising using the said mark – guides consumers to choose its branded products; in this way competition becomes more energetic and vibrant, since consumers are left free to select, in a market where selection is actually wide.

The above dynamic competition has as a corollary that manufacturers are compelled to retain quality levels.

As it has already been stated, a trade mark operates as a 'lighthouse' and guides consumers to select the products or services of their preference. If the quality of a specific product decays or such product's characteristics alter significantly, then the consumers would not be satisfied and thus opt for something else. Consequently producers are indisposed to reduce quality standards for their goods and by doing so lose both clients and incomings.

...a firm with a valuable trademark would be reluctant to lower the quality of its brand because it would suffer a capital loss on its investment in the trade mark.21

It is hereby suggested that the above stated opinion is correct. Firms on the one hand invest great capitals to create and promote products through specific trade marks, due to the above said vigorous competition. These firms depend on their registered signs to be successful in order to attract clients; this of course happens in relation to the qualities and characteristics of the respective branded product. If such qualities alter, then producers lose their investment in the trade mark. On the other hand firms lose potential incomings, since a possible decay in quality would probably not attract new customers or worse turn consumers away.

The final benefit is that the market gains stability from the use of trade marks. Manufacturers retain the standards of their products for the above mentioned reasons and therefore consumers are aware of what to expect from each manufacture and have the security that they acquire what they really desire.

The above effect reflects on the consumers as well, since it provides them with the assurance and the confidence that the goods or services they recognize and purchase due to their trade marks, are of consistent quality. The market transactions acquire stability, since the public feel confident in purchasing their preferred products.

Apart from the trade mark owners, consumers can also benefit from the effects of the use of various signs in distinguishing products or services. The sign provides the consumers information about the branded product or service in a symbolic and coherent manner. In this way it helps them identify products immediately. It accommodates them in recognizing the products they seek to acquire, because they had previous good experiences, or identifying the goods they possibly desire to avoid. Trade marks direct consumers simply and concisely to choose their preferred products or services; thus they decrease not only search costs but also search time.

The above reduction of search costs has an equivalent effect on producers. For them it reduces advertising and promotional costs. Once a product becomes known to the wider public and the consumers associate it with the trade mark that the said product bears, then the need to advertise becomes less necessary.

The above analysis has established that trade marks are in a great extent a valuable corporate asset. This is the reason why owners are continuously investing more to protect them, and if necessary to initiate the required legal proceedings. During the last few years trade mark owners have focused on infringement occurring in the internet. It is true that the widespread opinion exists that both the national legislation of states throughout the world as well as the relevant EU legislation, do not keep up with the developments in the Internet. Nevertheless some recent judgments of the European Court – such as the decision in the so called Goodgle Adwords case22 and that in the L'Oreal v. eBay case23 – should shed some light over trade mark infringement on the internet and provide some guidance to Courts, not only in Europe but all over the world as well.

II. 2. Sponsored Links and Search Engines

During recent years the internet has seen an increasing popularity. As a corollary advertising on the internet has become a strategic branding tool for the majority of companies and businesses.

It is now common practice for consumers to use internet search engines, for example Google and Yahoo, in order to locate information on the internet by simply typing a keyword into the search bar. According to the opinion of Advocate General Poiares Maduro in the Google AdWords case, when you are using an internet search engine, if you ask it shall be given to you; seek and you shall find.24

Usually once someone enters what he or she is looking for in the search engine, hundreds even thousands of results normally appear, hence that someone is able to choose the link of his or her interest. The word typed into the search bar is commonly known as a 'keyword'.

Such internet searches generally result in two types of results. The first is the 'standard' or 'natural' results' list, which is founded on popularity and similarity to the keyword or keywords and based on the search engine's own objective criteria. These 'natural' results, display links to websites that best correspond to the terms entered into the search engine bar by the individual user. The second result type is a list under the heading 'sponsored links', usually displayed above or to the right of the standard list. By purchasing the right to specific keywords from the search engine, companies and other advertisers can ensure that consumers, who type in the search engine the specified keyword, generate sponsored link results that display links to the website of the said advertiser. The sponsored link is often accompanied by a brief advertisement about the company.

The placement of sponsored links is dictated by the highest bidding advertiser, rather than popularity or relevance. Therefore, the use of sponsored links is an efficient strategy to elevate the status and placement of the advertiser's search ranking on the internet. Further, sponsored links tend to be more economic for advertisers, as the company only pays advertising fees when consumers actually click on the sponsored link and because the company can define its target area by restricting the occurrence of the sponsored link to users in particular countries or cities.

Google AdWords program is a system which allows a business or an individual to create their own advertisement by choosing to purchase specific terms – or as they are best known, keywords – to use in the said advertisements. However, it is not only Google that maintains such a paid referencing service. Nearly every search engine has such service. More specifically Windows Live Search has its Microsoft adCenter and Yahoo! maintains a Yahoo! Search Marketing program.

This particular service allows the users by nominating the keywords to trigger the display of a link to their webpage, every time a user performs a search using the chosen keywords. Each time that users of the specific search engine enter a search against the particular keyword the advert for the person that has purchased the keyword will appear next to the relevant results. As already noted here above the sponsored link usually appears separately with the common search result and typically will consist of a hyper link to the advertiser's website and a short description of the products or services provided by the relevant site. This short text message accompanying the sponsored link is created by the advertisers themselves.

Google is paid by the advertisers for every "click – through" to their webpage from the sponsored link. The advertisers can even determine how they are prepared to pay per click and arrange a daily spending limit. Once the said limit is outreached the sponsored link seizes to be displayed, until the following day.

A keyword is not sold exclusively to a single advertiser. The same keyword can be sold to multiple persons and as a result numerous sponsored links may appear when triggered by a specific search. These multiple results are ranked according to the highest per click price. This means that the highest price a person pays, the more likely his or her link will be displayed. It also means that popular keywords shall be more expensive than other words.

As expressed by Advocate General Poiares Maduro in its opinion regarding the Google joined cases, because many online advertisers select registered trade marks as keywords, trade mark owners are concerned that their marks are being inappropriately exploited and compromised by competitors or even counterfeiters. Trade Mark owners want to prevent advertisers from selecting their trade marks and keywords and they want to keep search engines from displaying ads in response to the use of their trade marks as search terms in an internet search.25

It is hence evident that the use of keyword advertising raises in specific circumstances possible trade mark infringement issues.

The above, together with other concerns regarding infringement of trade mark rights through the use of internet search engines and keyword advertising shall be further analyzed in the next chapter.

II. 3. Shopping on the Internet

There are no geographical barriers to online shopping. This is the main reason why businesses as well as individuals are increasingly utilizing electronic websites and marketplaces to offer for sale various products and to provide their services.

Online shopping could be interpreted as the process by which consumers directly purchase goods or services through the internet.

Many brands themselves have created online shops or web stores offering for sale their products, which bear their protected trade marks. In such cases consumers can rest assure that they are safely acquiring genuine merchandise directly from the trade mark owners. This activity does not entail any possible trade mark violations.

On the other hand many online auction sites or electronic marketplaces provide the opportunity to consumers to shop online or even become the sellers themselves. Auction sites are websites on which goods are being sold to consumers following an electronic auction. Auction site users practically bid for their products, the price of which is determined by the winning bid.

Furthermore online marketplaces allow individual traders to set up an account and offer for sale various items to other consumers. The operator of such a marketplace site is not the vendor of the merchandise, but rather provides the portal through which individual sellers or businesses can offer their products for sale, either through an electronic auction, allowing consumers to bid or through a fixed price sale. A product is usually offered on such online marketplaces for a fixed time period, during which consumers post bids on the relevant product. These bids are accepted in increments and when the designated bidding period is over the respective product is being purchased by the highest bidder. Prospective buyers are sometimes given the opportunity to set the highest price which they are willing to pay by instruction the online marketplace operator to bid automatically up to the designated limit. This technique is known as 'proxy bidding'.26 In addition electronic marketplaces allow items to be sold at a fixed price. In these e-commerce sites the product information, characterization and description are provided by the operators, which also process all transactions.

These online marketplaces have seen an increasing popularity during the past few years. Namely Amazon.com, Inc27 is considered to be the world's largest online trader, usually trading, amongst other things, books, DVDs, CDs, computer software and electronic games, while eBay28 which is mostly an internet consumer-to-consumer site, has currently a global customer base of 233 million.29

The operation and function of the said online marketplace sites can sometime raise intellectual property law concerns. For example they may potentially infringe trade mark and other intellectual property rights in cases where sellers offer for sale counterfeit merchandise through their online platforms. As a corollary various issues - such as the possible liability of the operator of such marketplace site – may arise.

These together with more specialized issues shall be thoroughly examined and discussed in Chapter III here below.

Footnotes

1 S Blakeney, 'Adverse to Adwords? An overview of the recent cases relating to Google Adwords' [2007] CTLR 13(3) 83.

2 First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the member States relating to trade marks, L040, 11/02/1989.

3 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, L 299/24, 08/11/2008.

4 Council Regulation 40/94 on the Community Trade Mark [1994] O. J. L11/1.

5 D T Keeling , 'About Kinetic Watches, Easy Banking and Nappies that Keep a Baby Dry: A Review of Recent European Case Law on Absolute Grounds for Refusal to Register Trade Marks' [2003] 2 IPQ 131.

6 Case T-106/00, Streamserve Inc. v OHIM, [2002] ECR II-723.

7 Case C – 273/00, Ralph Sieckmann v Deutches Patent und Markenamt [2002] E.C.R. I-11737.

8 R Burrell and M Handler, 'Making Sense of Trade Mark Law'[2003] 4 IPQ 388.

9 Case C – 283/01, Shield Mark BV v Kist (t/a Memex) [2003] ETMR 822.

10 Case R156/1998-2, Vennootschap Onder Firma Senta Aromatic Marketing's Application ( The smell of fresh cut grass) [1999] ETMR 429.

11 Case R 186/2000-4, Institute pour la protection des Fragrances (I.P.F.)'s Application, [2005] ETMR 42.

12 Case T – 305/04, Eden SARL v. Office for Harmonization in the Internal Market ( Trade Marks and Designs) [2006] ETMR 14.

13 Joined cases C-53/01 to C-55/01, Linde AG, Winward Industries Inc and radio Uhren AG, [2003] ecr I-3161, par.38

14 Coca-Cola Co's Application, Re, also known as Coca-Cola trade Marks [1986] F.S.R. 472, HL.

15 T Prime, European Intellectual Property Law, Ashgate, Dartmouth, 2000, p. 76.

16 Case 10/89, SA CNL-SUCAL NV v HAG GF AG [1990] ECR 1-3711.

17 C Gielen, 'Harmonization of trade mark law in Europe: the first trade mark harmonization directive of the European Council' (1992) 14 (8) E.I.P.R., 262-269.

18 Case C-206/01, Arsenal Football Club Plc v Matthew Reed [2002] ECR I-10273.

19 Case C-16/74, Centrafarm B. V. v Withrop B. V. [1974] ECR 1183, par. 8.

20 M A Cunningham, 'A Complementary Existence: An Economic Assessment of the Trademark and Competition Law Interface in the European Community' [1995] 10 Tul. Eur. & Civ. L.F. 141.

21 W M Landes and R A Posner, 'Trademark Law: An Economic Perspective' [1987] 30 J L & Econ 265.

22 Joined Cases C-236/08, C-237/08 and C-238/08, Google France Sarl v. Louis Vuitton Malletier SA, Google France Sarl v. Viaticum SA; Google France v. Centre national de recherché en relation humaines (CNRRH) Sarl, [2010] RPC 19.

23 Case C-324/09, L'Oréal SA, Lancȏme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie, L'Oréal (UK) Ltd v. eBay International AG, eBay Europe SARL, eBay (UK) Ltd, Stephen Potts, Tracy Ratchford, Marie Ormsby, James Clarke, Joanna Clarke, Glen Fox, Rukhsana Bi, Judgment of the Court (Grand Chamber) of 12 July 2011.

24 Joined Cases C-236/08, C-237/08 and C-238/08, Google France Sarl v. Louis Vuitton Malletier SA, Google France Sarl v. Viaticum SA; Google France v. Centre national de recherché en relation humaines (CNRRH) Sarl (Opinion of Mr. Advocate General Poiares Maduro), Sept. 22, 2009, at paragraph 1.

25 Ibid, paragraph 4.

26 Case C-324/09, L'Oréal SA, Lancȏme parfums et beauté & Cie SNC, Laboratoire Garnier & Cie, L'Oréal (UK) Ltd v. eBay International AG, eBay Europe SARL, eBay (UK) Ltd, Opinion of Advocate General Jääskinen delivered on 9 December 2010.

27 www.amazon.co.uk.

28 www.ebay.com.uk.

29 http://pages.ebay.co.uk/aboutebay/thecompany/companyoverview.html (accessed on 09 August 2011).

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions