Brussels, 09/12/2010 (Agence Europe) - An internet marketplace company, such as eBay, cannot generally be held liable for trade mark infringements committed by its users on its site, unless it has been notified of the continued or repeated infringement.
That, in short, is the opinion for the Court delivered by Advocate General Niilo Jääskinen in case C-324/09 L'Oréal Group and its subsidiaries Lancôme and Garnier (perfumes and cosmetics) v eBay International AG and its internet marketplace subsidiaries. L'Oréal accuses eBay of being involved in trade mark infringements committed by sellers on its internet marketplace: by buying keywords corresponding to L'Oréal trade marks on internet search engines, eBay directs its users to infringing goods offered for sale on its website, including to counterfeit goods and unpackaged products as well as the sale of products from outside the European Economic Area (EEA). Moreover, L'Oréal is of the view that the efforts taken by eBay to prevent selling infringing products on its electronic marketplace are inadequate. High Court (UK), before which the dispute is pending in the UK, has asked the Court what obligations are incumbent on eBay to prevent infringement of trade marks by users.
On the products at issue put up for sale on the internet marketplace (especially perfumes and cosmetics), the Advocate General finds that testers and dramming bottles, often marked with the words “not for sale” or “not for individual sale”, which are not intended for sale to customers and are supplied without charge to the trade mark proprietor's authorised distributors cannot be considered as being goods put on the market with the consent of the trade mark proprietor. It is therefore still up to the trade mark proprietor to decide if he intends to put these products on the market and he can also prohibit the sale of such products. Trade mark protection can also be invoked where the goods offered for sale on the electronic marketplace have not yet been put on the market within the EEA by or with the consent of the trade mark proprietor insofar as the offer for sale is targeted at consumers in EEA countries. As to the effects of the unboxing of trade marked cosmetic products, the Advocate General states that in the case of luxury cosmetics it cannot be excluded that the outer package of the product constitutes a part of the condition of the product due to its specific design which includes the use of the trade mark. Therefore, in such cases the trade mark proprietor is entitled to oppose further commercialisation of the unpackaged goods insofar as the removal of the package impairs the functions of the trade mark of indicating the origin and quality of goods or damages its reputation.
On eBay's role in the trade mark infringements, the Advocate General considers that, although eBay does not itself sell L'Oréal goods, it offers an alternative source for buying them which coexists with the distribution network of the trade mark proprietor. Therefore, by reserving L'Oréal trade marks as keywords leading customers to its internet marketplace, eBay uses these trade marks in relation to goods marketed by L'Oréal under these signs.
However, the use of the disputed trade marks as keywords by eBay does not necessarily result in misleading the consumers as to the origin of the goods offered: the purpose of the trade mark which is to indicate the origin of a product will not be compromised, “provided that a reasonable average consumer understands on the basis of information included in the sponsored link that the operator of the electronic marketplace stores in his system advertisements or offers for sale of third parties”. Furthermore, if this “use” consists of the display of the sign on the website of an operator of an electronic marketplace itself rather than in a sponsored link of a search engine, it cannot be deemed as use of the trademark in relation to goods by the marketplace operator, but by the users of the marketplace. In such cases, the marketplace operator merely allows its clients to use signs which are identical with trade marks without using those signs itself. Hence, the potential adverse effects to the trade mark resulting from the listing of trade mark protected goods by users of an electronic market place cannot be attributed, under EU trade mark law, to eBay.
Finally, the Advocate General does not consider that the involvement of eBay in drafting its clients' advertisements, through advice it provides, should result in losing the protection granted to businesses storing information uploaded by users, as in the Google case (see EUROPE 10179). However, such protection does not apply in cases where the electronic market place operator has been notified of the infringing use of a trade mark, and the same user continues or repeats the same infringement. Similarly, eBay still remains liable for the content of data it communicates as an advertiser to a search engine operator. (F.G./transl.rt)