Clarification from the ECJ on IP Infringement Control in E-Commerce
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A recent ruling by the European Court of Justice (ECJ) on 12 July 2011 in the L'Oreal v. eBay case is an interesting one as it goes some way toward clarifying the law with regard to IP infringement control in the area of e-commerce.
L’Oreal claimed that eBay was liable for trademark infringements committed on its website, not only by permitting counterfeit products to be sold through its platform but also by virtue of promoting these products.
eBay refuted this contention, arguing that it merely provides a contact facility between sellers and buyers, and that it cannot be held responsible for their actions. eBay also claimed to have made a concerted effort to minimise the amount of IP infringements that take place on its site by investing considerable resources in terms of personnel and finances, in an effort to insure maximum protection of the rights of trademark owners.
In its judgement, the ECJ clarified a number of important issues. They held:-
• that the proprietor of a trade mark may rely on his exclusive right as against an individual who sells trade-marked goods online only when those sales took place in the context of commercial activity;
• that a trade mark proprietor is entitled to prevent an online marketplace operator from advertising for sale, goods bearing its trade mark using a keyword which is identical to the trade mark, where that advertising does not enable reasonably well informed and observant internet users to ascertain (easily) whether the goods concerned originate from the proprietor of the trade mark or from a linked business or a third party;
• where a seller on an online marketplace infringes trademarks, the marketplace operator will be deemed to have played an active role and thus will be liable where it provides assistance to the seller such as optimising the presentation of the online offers for sale or promoting those offers. Even where it does not play such an active role, the ECJ held an operator may still be liable where it was aware of facts that a diligent operator should have realised meant that the offers in question were unlawful; and
• injunctions could be obtained against marketplace operators requiring that operator to take measures to prevent future infringement of those rights.
