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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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