Trade Marks On The Internet

In two recent cases before the High Court, Arnold J has referred

the following matters to the European Court of Justice (ECJ) for

guidance.

Liability of online information service providers (ISPs) for

trade mark infringement by users.

The High Court has ruled that eBay was not jointly liable for

trade mark infringement with several individual defendants who

placed counterfeit goods for sale on the auction site. eBay claimed

the benefit of the defences afforded to ISPs under Article 14 and

Article 15 of the E-Commerce Directive (2000/31/EC), on the basis

that it acted as a mere host of information (Article 14), and was

under no obligation to monitor the information it transmitted or

stored or to investigate any circumstances indicating illegal

activity (Article 15). The judge commented that "eBay could

and should do more to restrain future infringements and deal with

the problem of trade mark infringement", but it was under

"no legal duty to prevent infringement".

Judge Arnold also referred the following questions to the ECJ

for guidance on the basis that they are "unclear": (1)

whether eBay's own unauthorised use of L'Oréal's

trade marks as sponsored links to listings for infringing goods

meant that eBay was primarily liable for trade mark infringement;

(2) whether eBay should be entitled to a defence under Article 14

and Article 15; and (3) whether the court should grant an

injunction against eBay under Article 11 of the Directive on the

Enforcement of Intellectual Property Rights (2004/48/EC), since

eBay's services were being used by the defendants to infringe

L'Oréal's intellectual property rights.

Since there have been mixed decisions on these points in various

jurisdictions in the EU (for example, in France, eBay was ordered

to pay LVMH damages; L'Oreal succeeded against eBay in Germany;

and Tiffany failed to establish a trade mark infringement case

against eBay in the United States), the guidance that this referral

will bring will be much welcomed. However, until that time, there

will continue to be uncertainty in this area.

L'Oréal SA and others v eBay International AG and

others [2009] EWHC 1094 (Ch), 22 May 2009

Is keyword advertising trade mark infringement?

The High Court has decided to adjourn trade mark infringement

proceedings taken by Interflora against M&S, arising from the

purchase by M&S of variations of Interflora's brand name as

sponsored links under the Google AdWords scheme. The court has also

refused to grant an...