IP Snapshot: August 2011

TRADE MARKS

Martin Steven Lewis v Client Collection Limited [2011] EWHC 1627 (Ch), 6 July 2011

Martin Lewis, the founder and operator of the website moneysavingexpert.com, has been awarded summary judgment in a claim where he alleged that the defendant, Client Collection Limited ("CCL"), who ran a telephone-based claims management service operating under the name of "Money Claiming Experts", was infringing his UK registered trade marks for "Money Saving Expert" under sections 10(1), 10(2) and 10(3) of the Trade Marks Act 1994.

Interestingly, the Judge granted the application for summary judgment under section 10(2), holding that the defendant had no reasonable prospect of successfully defending the claim. This appears to be due to the reputation of the mark in the UK via the website moneysavingexpert.com. It was also significant that the defendant did not submit any positive evidence of its own but only sought to weaken the evidence adduced by the applicant.

For the full text of the decision, click here.

L'Oréal SA and others v eBay International AG and others, Case C-324/09, 12 July 2011

This is the eagerly awaited judgment from the Court of Justice of the European Union on the extent to which the operator of an online marketplace is required to provide assistance or bear responsibility (including potential liability) in relation to counterfeit goods or parallel imports that infringe trade marks offered on their online platforms. The Court reminded trade mark proprietors that they may only rely on their rights in the context of commercial activity. In regard to parallel imports, it was confirmed that EU trade mark laws apply to offers for sale relating to trade marked goods located in non-EU/EEA states if those offers for sale are targeted at consumers in the EU.

Importantly, the Court also confirmed that if a seller uploads an offer for sale that contains signs similar or identical to a registered trade mark, amounting to trade mark infringement, the marketplace operator may escape liability through the e-commerce directive "hosting" exemption, except where it has provided the seller with "active" assistance, or was aware of factors or circumstances to make the offer for sale in question unlawful, and, upon becoming aware, failed to remove or prevent access to the offer. This is probably the most problematic part of the judgment for marketplace operators. However, the extent to which online marketplace providers will in fact be burdened...