As the above analysis has indicated trade marks are valuable corporate assets and in cases where they are correctly exploited, they provide their trade mark proprietors with more fame, distinctiveness and benefits. Thus the respective owners of trade mark rights by contemplating their value and significance and by devoting material efforts into their future evolution, they invest significant amounts for their protection.
During most recent years trade mark proprietors have turned their attention to trade mark violations taking place on the internet. The internet has impressively grown over the last few years and has caused the development of new economic models and of novel advertising methods. It has provided for a new economic environment for individual consumers, as well as companies, to trade freely.
It is a reality that the internet by developing and creating new business and advertising systems, is pushing the boundaries of law, especially in the field of the protection of trade marks and other intellectuals property rights. It has been proven rather difficult for legislators and courts to keep up with online developments and to identify new types of intellectual property infringements. Nonetheless specific recent decisions of the ECJ demonstrate that the willingness exist to tackle these novel trade mark law issues.
The present essay has attempted to shed some light over the current issues and concerns relating to the infringement of trade mark rights occurring on the internet, within the European context.
Following the analysis here above, both keyword advertising with the use of sponsored links and trading through online marketplaces and auction sites constitute two important economic tools or systems developed through the use and evolution of the internet. Currently their function and operation causes various concerns and issues relating to the possible infringement of trade mark and other intellectual property rights. This is the reason why both decision of the ECJ – namely the decision in the Google Adwords case and that on the L'Oréal v. eBay case – have increased significance and have been welcomed with much anticipation.
Both these cases, which were thoroughly examined in the present essay, were expected by many to shed some light and provide some guidance regarding the said contemporary internet related trade mark issues. It has been established that the ruling in the L'Oréal v. eBay case can be characterized as a successful one, especially when compared with the impact of the Google AdWords decision. The said case determined a number of factors able to provide guidance in future cases regarding infringement of trade mark rights occurring on an electronic marketplace, such as eBay. In addition it effectively clarified instances on which the operator of such an electronic marketplace can be held liable. On the contrary the guidance provided by the European Court in the famous Google AdWords case was less clear and straightforward as it mainly left it up to the national courts to decide on a case by case basis, the circumstances that may give rise to the liability of the search engine – for example Google – in cases which involve trade mark violation caused through keyword advertising and sponsored links. As a result more relevant case law regarding the said subject is required by the ECJ; only then its guidance shall become clearer. In any case it is up to the national courts of the member states to correctly apply the guidelines provided by the European Court in both cases above. Only in case where the national courts apply these two ECJ rulings in a uniform manner, the law in the related areas shall be developed consistently.
Did the European Court provide sufficient guidance for national courts to be able to issue similar judgments? Only time and practice shall demonstrate that.
Apart from a possibility for a uniform development and application of the relevant law, the two above mentioned ECJ judgments, have at a great degree managed to balance the rights amongst the trade mark proprietors and the operators of search engines and electronic marketplaces respectively. It is hereby submitted that a mere review of the said cases will facilitate to better understand the position that either trade mark owners or operators of online sites hold. Especially the review of the ECJ's ruling in the L'Oréal v. eBay case is sufficient to provide clarity and thus enlighten the operators of electronic marketplaces about the danger to be held liable for trade mark infringement occurring though their sites and urge them to better control the said sites or take the appropriate measures against potential trade mark violation.
It is hereby submitted that both cases analyzed here above can provide substantial guidance regarding the whole use and function of online advertising, especially as far as advertisers are concerned. Advertisers are now aware that, they can still utilize as keywords trade marks belonging to third parties but they should ensure that through their advertisements the creation of confusion to consumers is not possible. In addition traders have once more been warned on the dangers of dealing with counterfeit goods.
It is a fact that both the Google AdWords and the L'Oréal v. eBay cases constitute important developments for the relevant field of law within the EU and can serve as an indication of contemporary trends. It might be that the Internet is a level playing field, where products and services can be traded freely. Nevertheless freely does not necessarily mean unlimitedly. Moreover the said rulings of the European Court point to that trade mark infringement on the Internet shall not be tolerated, at least not where is being detected.
Furthermore the said cases indicate the willingness and determination of the ECJ – as well as of the national courts of the member states – to keep up with the latest developments on the internet and to assess such developments from the legal point of view. As already commented this is quite a difficult task for the law and courts to perform; hence any kind of new jurisprudence is always welcomed and anticipated not only from the legal world but also from business undertakings and corporations. Nonetheless it would be somewhat bold to suggest that the law in the relevant field has been completely clarified as a result of the ECJ's rulings in the Google AdWords and the L'Oréal v. eBay cases. More cases need to follow before we see an established legal line in issues pertaining to trade mark infringement occurring either through keyword advertising or on online marketplaces. Even so, considering the fact that the boundaries of intellectual property and trade mark law are shifting on a continuous basis, the rulings of future cases on the relevant areas may even surprise us!
Bainbridge, D., Intellectual Property, Pearson, 2002
Prime, T., European Intellectual Property Law, Ashgate, Dartmouth, 2000
S Blakeney, 'Adverse to Adwords? An overview of the recent cases relating to Google Adwords'  CTLR 13(3) 83.
R Burrell and M Handler, 'Making Sense of Trade Mark Law' 4 IPQ 388.
M Colchester, 'AdWord Victory Means Pain for Brand Owners' March 23, 2010, available at http://blogs.wsj.com/source/2010/03/23/google-adword-victory-will-inflict-pain-on-brand-owners/.
M A Cunningham, 'A Complementary Existence: An Economic Assessment of the Trademark and Competition Law Interface in the European Community'  10 Tul. Eur. & Civ. L.F. 141.
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
Z Efroni, 'The ECJ's Ruling on Google AdWords' available at http://cyberlaw.stanford.edu/node/6446
C Gielen, 'Harmonization of trade mark law in Europe: the first trade mark harmonization directive of the European Council' (1992) 14 (8) EIPR, 262-269.
P Gillieron, 'Online advertising Business models and Distinctive Signs – Should one rethink the concept of confusion?'  IIC 39(6), 688 – 706.
M Hammings Kent, 'Google Allows Trademark Owners to Block Purchase of their Marks as Adwords', August 8, 2011 available at http://www.martindale.com/intellectual-property-law/article_Venable-LLP_1326962.htm.
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'  2 IPQ 131.
P Kenyon, 'Are Google AdWords Fairgame?' available at www.vertexlaw.co.uk/knowhow/articles/articles_detail.php?id=000126
W M Landes and R A Posner, 'Trademark Law: An Economic Perspective'  30 J L & Econ 265.
N Lehmann, 'Clear Guidelines Needed for Keyword Advertising', ManagingIntellProp Apr.  at p.4, available at http://www.valea.se/upload/Pdf/MIP2008BM-KeywordAdvertising-reprint.pdf
D Meale, 'The Online Advertising Free-riding Free-for-all'  3 J IntellProp L & Prac 779.
N Shemtov, ''Searching for the Right Balance: Google, Keywords, Advertising and Trade Mark Use''  EurIntellProprev 470
T Smith 'Googling a Trademark: A comparative look at keyword use in internet advertising'  TILR 46:231
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
'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
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.
TABLE OF AUTHORITIES
Council Regulation 40/94 on the Community Trade Mark  O. J. L11/1.
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.
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.
Directive 2000/31 of the European Parliament and the Council of 8 June 2000 on certain aspects of information society, in particular electronic commerce, in the Internal Market (Directive on electronic commerce), OJ L 178/1, 17.02.2000
Case C-16/74, Centrafarm B. V. v Withrop B. V.  ECR 1183, par. 8.
Case C-10/89, SA CNL-SUCAL NV v HAG GF AG  ECR 1-3711.
Joined Cases C-414/99 to C-416/99 Zino Davidoff and Levi Strauss  ECR I-8691.
Case C – 273/00, Ralph Sieckmann v Deutches Patent und Markenamt  E.C.R. I-11737.
Case C – 283/01, Shield Mark BV v Kist (t/a Memex)  ETMR 822.
Joined cases C-53/01 to C-55/01, Linde AG, Winward Industries Inc and radio Uhren AG,  ecr I-3161, par.38
Case C-206/01, Arsenal Football Club Plc v Matthew Reed  ECR I-10273
Case C-348/04, Boehringer Ingelheim and Other  ECR I-3391.
Case C-487/07 L' Oreal SA v Bellure NV  E.C.R. I-0000,  R.P.C. 1.
Case C-558/08, Portakabin Ltd, Portakabin BV v Primakabin BV, 8 July 2010
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,  RPC 19.
Case C-558/08, Portakabin Ltd, Portakabin BV v Primakabin BV, 8 July 2010
Case C-323/09 Interflora Inc, Interflora British Unit v Marks & Spencer Plc, Flowers Direct Online Limited, Judgment of the Court (First Chamber) of 22 September 2011.
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.
Case T-106/00, Streamserve Inc. v OHIM,  ECR II-723.
Case T – 305/04, Eden SARL v. Office for Harmonization in the Internal Market ( Trade Marks and Designs)  ETMR 14.
Case R156/1998-2, Vennootschap Onder Firma Senta Aromatic Marketing's Application ( The smell of fresh cut grass)  ETMR 429.
Case R 186/2000-4, Institute pour la protection des Fragrances (I.P.F.)'s Application,  ETMR 42.
Coca-Cola Co's Application, Re, also known as Coca-Cola trade Marks  F.S.R. 472, HL.
Az 6 W 17/08, OLG Frankfurt, February 26, 2008.
Crrnh, Pierre Alexis T. v. Google France and others (Nanterre District Court, December 12, 2004, confirmed by Versailles Court of Appeal, March 23, 2006).
Amen v. Espace 2001 and Google (June 24, 2005).
Atrya v. Google France and K par K/Techni Feneres, Strasbourg District Court, July 20, 2007.
Reed Executive Plc v Reed Business Information Ltd  EWCA Civ 159;  E.T.M.R. 56 CA [Civ Div].
Wilson v Yahoo! UK Ltd,  EWHC 361 (Ch);  E.T.M.R. 33 (Ch D).
Tiffany (NJ) Inc. V. eBay Inc., United States Court of Appeals for the Second Circuit, Docket No. 08-3947, decided April 1, 2010
Inwood Laboratories, Inc v. Ives Laboratories, Inc, 456 U.S. 844 (1982).
Lancome v. eBay, Brussels Commercial Court, Aug. 12, 2008, Docket No. A/07/06032.
Case No. 200677799, S.A. Louis Vuitton Malletier v. eBay Inc, Tribunal de Commerce de Paris, Premiere Chambre B., June 30, 2008.
Hermes v. eBay, Troyes High Court, June 4, 2008 Docket 06/0264.
Opinions of Advocates General
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.
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.
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.