Cyprus: Trade Mark Infringement On The Internet: Current Issues And Concerns In Europe (Online Marketplaces, eBay, L’Oreal v. eBay: A Case With No Winners) - Part 3

IV. CHAPTER THREE: TRADE MARK INFRINGEMENT ON ELECTRONIC MARKETPLACE SITES

IV. 1. Trade Mark Infringement on Online Marketplaces

The eBay electronic marketplace or any such other marketplaces or auction sites usually facilitate the purchase and sale of goods over the internet by individuals. eBay is currently considered to be one of the most popular and sophisticated marketplaces on the internet. According to the opinion of Advocate general Jääskinen in the L'Oréal v eBay case, eBay has built up a system which greatly facilitates the selling and buying over the internet by individuals, with a powerful search engine, a secure payment system and extensive geographical coverage. In order to attract new customers to its website, eBay buys keywords, such as well-known trade marks, from paid internet references services (such as Google's AdWords). The use of a selected keyword in the search engine triggers the display of an advertisement and a sponsored link, which leads directly to eBay's electronic marketplace70.

For many, eBay has revolutionized the online sale of goods, especially used goods71. It connects purchasers and sellers and enables the performance of transactions directly between those eBay members. eBay does not itself sell the products which are listed on its website nor does it take physical possession of them. It facilitates potential purchasers to bid for products offered by various vendors. It also permits items to be sold outside an auction and hence at a fixed price, through a system which is known as 'Buy It Now'. In addition sellers have the choice to create an online shop through eBay's webpage, in which all products offered for sale by a specific seller are listed at any given time.

eBay is considered to be exceptionally successful. More than six million new listings are posted on its site daily and at any given time it contains some 100 million listings72. It generates its revenue from the 'insertion fee' that users pay in order to use its listing services, which is based on the starting price for the products, and also through PayPal, a system which allows eBay members to process their purchases by deducting a fee for each transaction.

Some of the main concerns regarding the functioning of the eBay online marketplace that can be identified are the possible offer for sale of various counterfeit products on eBay on the one hand and the selling of unpackaged products on the other hand. One of the most famous cases, worldwide, concerning the selling of counterfeit products through the eBay marketplace, is the Tiffany v eBay case in the US, in which Tiffany (NJ) Inc. and Tiffany and Company (hereinafter jointly referred to as 'Tiffany') had instituted proceedings against eBay for trade mark infringement, trade mark dilution and false advertising based on its concerns that eBay was selling counterfeit Tiffany merchandise.

Furthermore parallel importation could be an issue since eBay sometimes offers to consumers in the EU or the European Economic Area (hereinafter referred to as 'EEA'), goods that are intended for sale in third countries. The above raise possible trade mark infringement concerns. Is the whole function of the eBay liable for trade mark infringement?

Since eBay obtains revenue on every transaction taking place amongst its members, it actually benefits each time a counterfeit product is sold. Therefore it could be argued that it profits from transactions that constitute trade mark infringement. Nevertheless eBay never sees or inspects the merchandise, because, as it was mentioned here above, it never gains physical procession of the products. Consequently eBay cannot determine whether goods sold in its website are counterfeit or not. How then can it be liable for trade mark infringement? Does perhaps eBay infringe trade mark rights by supplying its services to its users while knowing or having reason to know that the said users offer for sale non genuine products?

In any case eBay invests great amounts of money and spends as much as Twenty Million US Dollars each year on tools to promote trust and safety on its website73. More specifically under its buyer protection programme in certain circumstances, the purchaser can be reimbursed for the cost of merchandise bought on eBay in case that this merchandise is not genuine. Moreover it has allowed trade mark proprietors to set up an 'About Me' page on eBays site in order to inform eBay members about their goods and their intellectual property rights. Also prospective eBay users must register themselves and enter into a standard agreement. It is a breach of eBay's user agreement to sell any counterfeit items or infringe trade marks74. Furthermore eBay operates the Verified Rights Owner programme (hereinafter referred to as 'VeRO') in order to protect trade mark proprietors from a possible violation of their intellectual property rights. The said VeRO programme provides the possibility to trade mark right owners to report eBay listings that infringe their respective rights. eBay's practice is actually to remove the infringing listing and to cancel the respective auction or sale. In 2007 about 90 percent of listings reported through the VeRO proramme were taken down within six to twelve hours and about 98 percent were taken down within 24 hours75.

It is evident that eBay devotes significant time, money and effort to develop its trust and safety measures and to prevent or oppose infringement. But are these measures and efforts enough?

Regarding eBay's liability for the sale of counterfeit products, the European national courts have not been consistent in their findings. Brussels Commercial Court refused to hold eBay liable for counterfeit cosmetic products sold through its website76. In contrast both the Tribunal de Commerce de Paris in the S,A, Louis Vuitton Malletier v. eBay77 case and Troyes High Court in the Hermes v eBay78 case ruled that eBay did in fact violate applicable trade mark laws.

The US Court of Appeals in its famous Tiffany v. eBay ruling, held that eBay's use of the trade marks belonging to Tiffany on its website was lawful , since on the one hand it utilized the trade marks to describe accurately the genuine products offered for sale on its site and on the other hand there was no suggestion that Tiffany affiliated itself with eBay or endorsed the sale of its products on its website. It was accepted that eBay was utilized by its users for the sale of both genuine and counterfeit products. Furthermore the US Court stated that eBay did not have any secondary liability (or as it is there called contributory liability) for trade mark infringement since eBay should have had more than a general knowledge or reason to know that its service in being used to sell counterfeit goods as well as genuine products. More specifically it reaffirmed the decision of the American district court that no secondary liability arises in cases where the listing has been terminated by eBay as soon as it discovered that the said listing constituted infringing conduct.

Moreover, as regards the possible trade mark infringement arising out of unpackaged goods sold through the eBay webpage, the situation is quite complicated, mainly due to the lack of ECJ's case law. Nevertheless the European Court with its decision in the Boehringer Ingelheim79 case, assisted in clearing the horizon.

According to the principle of the exhaustion of rights conferred by a trade mark, safeguarded by Article 7 of Directive 89/104 a trade mark does not entitle its proprietor to prohibit its use in relation to products that have been put into the market by that proprietor or with the proprietor's consent. That means that when a product is placed on the market by the trade mark owner, the said owner loses the ability to control further sales of the product bearing the protected sign. There is an exception to this principle according to which when there exist legitimate reasons for the trade mark owner to oppose the further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.

The Boehringer Ingelheim case concerned the further sale of medicinal products into the Community after the extended alteration of their packaging. In the said case the ECJ held that a trade mark owner may legitimately oppose further commercialisation of a pharmaceutical product in cases where the parallel importer has either re-boxed the product and re-applied the trade mark or applied a label to the packaging containing the product. One of the conditions that need to be fulfilled for this to apply is that the condition that the presentation of the repackaged product must be such as to be liable to damage the reputation of the trade mark and of its owner.80 However it could be argued here that for specific products the package does not play an important role to their presentation, value or reputation. For example when someone is purchasing jewellery, the box in which the jewellery is put in is most of the times irrelevant. On the contrary this does not apply for cosmetics or pharmaceutical products, especially since usually these products bear essential information regarding ingredients and directions for use on their packaging.

On this subject Advocate General Jääskinen commented the following:

However to my mind it cannot be excluded that in the case of products such as luxury cosmetics the outer package of the product may sometimes be considered as a part of the condition of the product due to its specific design which includes the use of the trade mark. In such cases the trade mark proprietor is entitled to oppose further commercialisation of the unpackaged goods. 81

It is arguable whether the above view can be supported, especially the Advocate General's reference to 'luxury cosmetics'. What can be considered as a 'luxury' product is in my opinion quite vague and would require an analysis on a case by case basis. There is undoubtedly a vast variety of such products and not all of them enjoy the benefit of a luxurious bottle or package. It could hence be supported, that a firm guidance provided by the ECJ would be much more desirable and could overcome this hurdle.

In addition, this essay hereby submits that concerning the sale in Europe or in the EEA, through the eBay website, of various products indented for sale in third countries, the situation seem to be more simple. As these products were not put in the European market by the respective trade mark owners, their offer for sale may constitute trade mark infringement.

Apart from the EU trade mark legislation, this is based on various rulings of the ECJ, including the Zino Davidoff and Levi Strauss82 joined cases, according to which it is essential that the owner of a trade mark registered in a Member State can control the first placing of goods bearing that trade mark on the market in the EEA. Yet the situation regarding online marketplaces or other electronic sites seem to be somewhat more complicated since the internet can be accessed from all over the world. Which factor can indicate if the individual seller was indenting to offer the respective goods for sale with the EU or the EEA? Is it possible for the ECJ or any other court to issue specific guidelines for this matter?

The above could apply mutatis mutandis regarding the offer for sale on the eBay website of products not indented for sale by their proprietors. Products such as samples or testers. It could be argued here that such products since they are supplied free of charge they are not put on the market by their trade mark owners and hence the trade mark proprietor's rights are not exhausted.

On the European level a lack of clear and firm guidelines existed regarding issues arising out of the use of electronic marketplaces. All the above matters were recently addressed in the context of the L'Oréal v eBay case to be thoroughly analyzed here below.

IV. 2. Is eBay liable for counterfeits sold in its site? The Court's decision.

Advocate General Jääskinen, in his opinion regarding the L'Oréal v eBay case, had correctly recognised that the European Court was burdened with a difficult task. It had to draw the right balance between the protection of the legitimate interests of the trade mark proprietors, on the one hand, and those of businesses and private individuals using the new trading opportunities offered by internet and electronic commerce, on the other hand.83

He also pointed out that the ruling of the European Court should be such a not to restrain legal uses of a sign that a trade mark owner cannot legitimately oppose. I hereby agree with the above opinion, since it is reasonable to presume that not all transactions on eBay are liable for trade mark infringement. For example someone does not breach any laws, if he purchases a number of products bearing a protected trade mark from a bankrupt or insolvent shopkeeper and decides to sell such products through eBay.

This and other reasons suggested that the ECJ had a double-balancing duty to undertake.

This case concerned a reference made in proceedings between L'Oréal SA and its subsidiaries Lancôme parfums et beaute & Cie, Laboratoire Garnier & Cie and L'Oréal (UK) Ltd (hereinafter collectively referred to as 'L'Oréal') , on the one hand and three subsidiaries of eBay Inc., namely eBay International AG, eBay Europe SARL and eBay (UK) Ltd (hereinafter collectively referred to as 'eBay') and various individual defendants.

The preliminary questions referred to the ECJ by the High Court Justice (England and Wales) Chancery Division concerned among others the possible infringing effect of the sale through the eBay of perfume and cosmetic testers and dramming bottles, of unboxed products, of counterfeit merchandise bearing trade marks of L'Oréal and goods that were not intended for sale in the EEA.

Regarding the issue of the offer for sale through the eBay of goods bearing a protected trade mark, which had not previously been put on the market in the EEA or in case of a community trade mark, in the EU, the European Court held that a trader which offers for sale such goods would be liable for trade mark infringement. The Court went on to state that it must be clear that the sole fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there, are targeted at consumers in that territory and it left it to the national courts to decide on a case by case basis:

It therefore falls to the national courts to assess on a case by case basis whether there are any relevant factors on the basis of which it may be concluded that an offer for sale, displayed on an online marketplace accessible from the territory covered by the trade mark, is targeted at consumers in that territory.84

I would hereby suggest that the above ruling of the court leaves the door open to the possibility of establishment of various approaches through possible differing decisions of the national courts of the member states. As a result the said issue may not be treated homogeneously and with consistency throughout the EU and could remain largely unharmonised. It seems that the ECJ has failed to provide the national courts with clear guidelines on this subject.

Furthermore the ECJ was consistent in ruling that it is important for a trade mark owner to control the first placing of merchandise bearing the said trade mark in the market. It reaffirmed the Silberquelle85 judgment by stating that when promotional items are supplied free of charge, they are not regarded as being put on the market by the trade mark proprietor. Therefore in case that a trade mark owner supplies to its authorized dealers products which bear its protected sign intended for demonstration to potential purchasers in authorized retail stores, as well as small containers which are intended to be provided to consumers as free samples, those products are not put on the market within the meaning of the Trade Mark Directive 89/104 and Regulation 40/94.

In relation to unboxed goods the Court held that the proprietor of a trade mark may, by virtue of the exclusive right conferred by the mark, oppose the resale of goods such as those at issue in the main proceedings, on the ground that the person reselling the goods has removed their packaging, where the consequence of that removal is that essential information, such as information relating the identity of the manufacturer or the person responsible for marketing the cosmetic product, is missing. Where the removal of the packaging has not resulted in the absence of that information, the trade mark proprietor may nevertheless oppose the resale of an unboxed perfume or cosmetic product bearing his trade mark, if he establishes that the removal of the packaging has damaged the image of the product and, hence, the reputation of the trade mark.86

Someone could pose the question here, when does the removal of the packaging damage the image of the product and consequently the reputation of the relevant trade mark? Well, the European Court did not provide with a definite answer but rather it ruled that this is something that should be examined and decided on a case by case basis. This on the one hand is reasonable, since not all products are packaged into special or unique boxes or bottles. More specifically, there is a vast variety of cosmetics and not all of them are contained into luxurious boxes. An Estée Lauder crème bearing the famous golden mark would be an example of packaging providing a prestigious image. Nevertheless not all brands have the fame of Estée Lauder. On the other hand, it could be argued that for once more the ECJ fail to provide a firm guidance, reserved itself to general comments and remarks and left this matter to be decided on a case by case basis by national courts.

Moreover the ECJ had to provide its answers to two preliminary questions relating to the advertisement by the operator of an online marketplace of its website and the products offered on it, and more specifically relating to the advertisement with the use of keywords. Concerning this point the Court did not face any serious problems as it was more or less guided by its previous ruling in the Google AdWords case – which was considered and analyzed here above. Hence it ruled that the proprietor of a protected sign is entitled to prevent an online marketplace operator, such as eBay, from advertising trade marked goods, where the advertisement does not enable the average internet user or enable him or her only with difficulty to ascertain if the relevant products originate from the trade mark owner or from an undertaking economically linked to it.

It can be argued that the said ruling of the ECJ has in a way confirmed that eBay and electronic marketplaces and other auction sites are not primarily liable against trade mark proprietors for the sale of infringing goods via their websites.

However the Court decided that these online marketplaces cannot claim exemption from liability for relevant violations if they are aware of the illegal nature of the sales facilitated through their online platforms. That means that electronic marketplaces cannot rely on the hosting defence provided by Article 14 (1) of the Directive 2000/31 on electronic commerce, which provided that where an information society service is provided that consists of the storage of information provided by a recipient of the service, member states shall ensure that the service provider is not liable for the information stored at the request of a recipient of the service, on condition that the provider does not have actual knowledge of illegal activity or information and, as regards claims for damages, is not aware of facts or circumstances from which the illegal activity or information is apparent; or the provider, upon obtaining such knowledge or awareness, acts expeditiously to remove or to disable access to the information.

One of the conditions for which eBay could be held liable is that it has taken an active role in the relationship between the purchaser and the seller of the infringing products. Such a role can be played when the electronic marketplace provides assistance which entails, in particular, optimizing the presentation of the offers for sale87 or promoting the said offers.

In addition the hosting defence of Article 14 (1) of the Directive on electronic commerce can fail in cases where the electronic marketplace operator may be aware of facts or circumstances from which the illegal activity or information is apparent or that having obtained such knowledge or awareness, it has failed to act expeditiously to remove, or disable access to, the infringing information.

It is hereby submitted that the decision of the ECJ sets the bar a bit higher regarding online marketplaces than the decision of the US Court of Appeals in Tiffany v. eBay. The said US Court applied a test known as the 'Inwood Test', established in the case Inwood Laboratories, Inc v. Ives Laboratories, Inc88 according to which a service provider defendant, may become contributorially liable for the infringing conduct of another if firstly the service provider "intentionally induces another to infringe a trade mark" and secondly, if the service provider "continues to supply its [service] to one whom it knows or has reason to know is engaging in trade mark infringement".89

Under the US ruling in Tiffany v. eBay case, for contributory (or secondary) liability to exist, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary.

As a corollary when a trade mark proprietor complaints to eBay of counterfeit goods sold via its platform this is not enough to support secondary liability. Likewise when an online marketplace removes a listing after a complaint filed by a trade mark owner, it cannot be held liable for secondary liability. For example, following the above a notification from VeRO programme should not suffice to establish knowledge in support of contributory (or secondary) liability of the online marketplace.

Consequently following the Tiffany v. eBay decision is rather difficult to establish secondary liability for eBay regarding trade mark infringement.

It is therefore argued that the ECJ's ruling in the L'Oréal v. eBay case leaves adequate space for the establishment of secondary liability of an electronic marketplace site. Awareness can be easily proved in cases where the operator of an online marketplace uncovers, as the result of an investigation undertaken on its own initiative, an illegal activity or unlawful information, as well as a situation in which the operator of the electronic marketplace is notified about the existence of such activity or information.

In the second case, although such a notification admittedly cannot automatically preclude the exemption from liability provided for in Article 14 of Directive 2000/31, given that notifications of allegedly illegal activities or information may turn out to be insufficiently precise or inadequately substantiated, the fact remains that such notification represents, as a general rule, a factor of which the national court must take account when determining, in the light of the information so transmitted to the operator, whether the latter was actually aware of facts or circumstances on the basis of which a diligent economic operator should have identified the illegality.90

The above extract from the relevant court ruling constitutes sufficient proof that the ECJ has provided a valuable and satisfactory guidance to national courts, in order to facilitate such courts to determine which of the cases amount to secondary liability of the operator of the online marketplace. The European Court's decision has clearly and precisely identified the factors onto which the national courts can base their reasoning and reach to their decision.

Besides the European Court went one step further than the US Court and held that national courts are allowed in specific circumstances to grant effective and proportionate injunctions, which do not create barriers to legitimate trade, against online marketplaces requiring them to take action to restrain future infringements in cases where the operators of the online marketplaces do not decide, on their own initiative, to suspend the perpetrator of the trade mark infringement themselves. In order to clarify this position of the ECJ we could state that an injunction preventing the sale of all products bearing a particular protected trade mark would not be proportionate and would create barriers to legitimate trade. However an injunction requiring an electronic marketplace to suspend a specific trader who offers for sale counterfeit products would be effective and proportionate.

On the other hand – following the above - the operators of an electronic marketplace themselves should take measures to monitor their online platforms in order to prevent future infringement. Yet the ECJ held that:

...the measures required of the online service provider concerned cannot consist in an active monitoring of all the data of each of its customers in order to prevent any future infringement of intellectual property rights via that provider's website.91

It follows from the above that online marketplaces are not expected to police their members who offer products for sale through their platforms or to impose their websites under thorough scrutiny. Nevertheless they should take fair, reasonable and proportionate measures. Hence the adequacy of the VeRO programme can potentially fall into doubt. As it has be seen the VeRO programme is a 'notice and takedown system', whose operation is based on notifications filed by trade mark proprietors. This essay submits that system alone will not be enough to exempt eBay from liability for trade mark infringement following the ECJ's L'Oréal v. eBay decision.

Can an online marketplace such as the eBay be liable for trade mark infringement occurring through its website? Under the light of the recent ECJ judgment in the case of L'Oréal v. eBay – examined here above – yes, it can be. This alone is enough to highlight the importance of the said case, especially since on the other end of the Atlantic the courts have reached a different conclusion. Nonetheless this does not mean that L'Oréal was the big winner of the case. This was a case with no winners, since the European Court was successful in striking a fair balance between the rights and interests of both sides.

IV. 3. L'oreal v. eBay: A Case with no Winners

The decision of the ECJ in the L'Oréal v. eBay case has been waited with much anticipation and it has been welcomed with mixed comments and reactions.

On the one hand the ECJ's ruling dated 12th of July 2011 was interpreted to be a 'blow' for eBay and other similar marketplaces and auction sites, while others considered the decision to be merely 'satisfying' and 'clarifying'.

Trade mark owners are no longer alone in their fight for online brand protection. Instead...companies can be held accountable for the goods which pass through their hands. Brands have been concerned for years now that the internet has facilitated the trade of counterfeit goods. Items which would otherwise be available only from black-street traders have become instantly available to consumers in the privacy of their own homes. L'Oréal and other brand owners will be hoping that online marketplaces like eBay now sit up and pay attention to the sales of counterfeit items which go through their sites92.

According to the above comment by Kirsten Gilbert, partner at Marks & Clerk Solicitors, brand owners should be jubilant. I do not quite agree. This might be a good decision for L'Oréal, nevertheless the ECJ's ruling should not be viewed as a 'blow' to electronic marketplaces but rather as a guidance. This is endorsed by the fact that according to the ECJ it's up to national courts to order companies such as eBay to take measures intended not only to bring to an end infringements of intellectual property rights but also to prevent further infringements of that kind.93 On the other hand the ECJ's ruling can act as a wake up call to operators of online marketplaces in order for them to be more careful and conscientious when it comes to sale of counterfeit products through their electronic platforms.

It could be supported that when viewed under the proper angle, this judgment of the European Court can have beneficial outcomes for both trade mark proprietors and online marketplace operators. In any case the individual consumer will be also benefited since the danger purchasing counterfeit products shall be somehow reduced.

Furthermore Stefan Krawczyk, senior director at eBay Europe stated that the judgment provides some clarity on certain issues and ensures that all brands can be traded online in Europe.94 In any case eBay shall certainly continue to exist and operate as we know it today. Someone should not disregard that eBay's significance is rather great since it provides a level playing field for the average internet user or the average consumer to trade online by purchasing or selling merchandise. In any case the economic freedom to trade on the internet is greatly important and should not be unreasonably constrained. On the contrary, it is suggested that the said ECJ's ruling can facilitate to reinforce this economic freedom, since if eBay, as well as other operators of online marketplaces, take diligent measures against sellers offering counterfeit goods, the safety of consumers trading through their platforms should be strengthened. Consumers shall feel more confident when purchasing merchandise through an online marketplace, in cases where they are aware that the relevant operator takes some measures against the selling of non-genuine products. Thus by having greater security the electronic marketplaces and auction sites shall also have increasing popularity.

I hereby submit that there are no clear winners in the L'Oréal v. eBay case:

In a case with no outright winners the Court of Justice of the European Union...has struck a balance between the brand owners and online marketplaces in relation to the sale of infringing goods95.

The present essay supports the above opinion. That means that the European Court was successful in its difficult task, namely to protect registered trade marks but at the same time without affecting the current economic trends which keep evolving with the development of the internet and of its various uses.

In case that the ECJ found eBay primarily liable for the sale of infringing products through its website, that could be a potential strike to the economic freedom of each individual to trade through an electronic marketplace on the internet; something neither desirable nor necessary. This balance which was achieved by the said ECJ's ruling comes down to that there will be a greater burden on electronic marketplaces and auction sites to act more diligently regarding the trading of counterfeit products through their website.

But what can online marketplace sites do in order to apply their duty for diligence? It is hereby suggested that they should amend and enhance notification systems such as the VeRO programme. It seems that a system whereby trade mark owners notify the electronic marketplaces that a seller offers counterfeits goods does not suffice. Operators themselves should be able to investigate (perhaps in a random matter) if some of their members are trading non-genuine merchandise. Besides they could initiate random or casual enquiries through the online marketplace users to establish the qualities and characteristics of the products sold.

Still this essay submits that the decision of the European Court in the L'Oréal v eBay case is unsatisfactory to the extent that it leaves it up to the national court of the member states to assess specific issues of importance, while it should have provided a more concrete guidance. Nevertheless in comparison to the Google AdWords case this ECJ ruling has determined a number of concrete factors that national courts should take into account when assessing a specific case. In this way the said decision can be considered as valuable and concrete. Especially in the matters involving the liability of the operator of an online marketplace and the injunctions that can be granted by national courts, the judgment of the ECJ is in fact extremely accommodating national courts in reaching their decision.

It is hereby suggested that the decision of the European Court in the L'Oréal v. eBay case is not only the most recent but also the most valuable judgment concerning the trade mark infringement on the Internet issue. It has indeed struck a balance between the rights of the trade mark proprietors and the operators of electronic marketplace sites such as eBay or other auction sites. Nonetheless both sides should be careful in utilizing and interpreting this ruling in the right manner in order for them to gain its full benefits.

Footnotes

69 Ibid, paragraph 50.

70 Case C-324/09 L'Oreal SA, Lancôme Parfums et Beauté & Cie, Laboratoire Garnier & Cie, L'Oreal (UK) Limited v eBay International AG, eBay Europe SARL, eBay (UK) Limited, Opinion of Advocate General Jääskinen no 26 above.

71 Tiffany (NJ) Inc. V. eBay Inc., United States Court of Appeals for the Second Circuit, Docket No. 08-3947, decided April 1, 2010.

72 Ibid.

73 Ibid at page 8.

74 Case C-324/09, Opinion of Advocate General Jääskinen, No. 26 above at paragraph 24.

75 Ibid at paragraph 31.

76 Lancome v. eBay, Brussels Commercial Court, Aug. 12, 2008, Docket No. A/07/06032.

77 Case No. 200677799, S.A. Louis Vuitton Malletier v. eBay Inc, Tribunal de Commerce de Paris, Premiere Chambre B., June 30, 2008.

78 Hermes v. eBay, Troyes High Court, June 4, 2008 Docket 06/0264.

79 Case C-348/04, Boehringer Ingelheim and Other [2007] ECR I-3391.

80 Ibid at paragraphs 43 and 44.

81 Case C-324/09, Opinion of Advocate General Jääskinen, No. 26 above at paragraph 44.

82 Joined Cases C-414/99 to C-416/99 Zino Davidoff and Levi Strauss [2001] ECR I-8691, par. 33.

83 Case C-324/09, Opinion of Advocate General Jääskinen, No. 63 above at paragraph 4.

84 Case C-324/09, no. 23 above at paragraph 67.

85 Case C-495/07 Silberquelle [2009] ECR I-137.

86 Case C-324/09, no. 23 above at paragraph 83.

87 Ibid at paragraph 123.

88 Inwood Laboratories, Inc v. Ives Laboratories, Inc, 456 U.S. 844 (1982).

89 Ibid, at 854.

90 Case C-324/09, no. 23 above at paragraph 122.

91 Ibid at paragraph 139.

92 Europe: eBay is Liable for Coutrerfeits Sold on Its Site – comment from Intellectual Property specialists Marks and Clerk in response to ruling by European Court of Justice, available at www.marketforce.eu.com .

93 Court of Justice of the European Union, Press Release No 69/11, Judgment in Case C-324/09 L'Oreal and Others v eBay, available at: http://curia.europa.eu/jmc/upload/docs/application/pdf/2011-07/cp110069en.pdf

94 'eBay 'May be Liable' for Sale of Fake Goods, Court Says', BBC NEWS Business, 12 July 2011 available at http://www.bbc.co.uk/news/business-14127465?print=true (accessed on 15th August 2011).

95 E Devlin, 'But was it worth it? The significance of the L' Oreal v eBay trade mark ruling for brand owners and online marketplaces' 19 July 2011 available at http://www.osborneclarke.com/publications/services/litigation/insight/2011/but-was-it-worth-it-the-significance-of-the-loreal-v-ebay-trade-mark-ruling-for-brand-owners.aspx (accessed on 15th Augusr 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 Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd 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 or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

Registration

Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

Cookies

A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

Links

This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

Mail-A-Friend

If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

Security

This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.