The court was asked as to whether the on-line marketplace site defendant was liable for trade mark infringements by those advertising goods on the web-site.
Held: The ECJ had not yet clarified the law on accessory liability in trade mark infringement, and the legislation remained unclear. Many of the direct sellers were held to be selling in infringement of the claimants marks. Guidance from the ECJ was required to establish whether the first defendants were also infringing. eBay was under no legal duty to prevent infringement and facilitation of infringement with knowledge and an intention to profit was not enough to render it liable.
Judges:
Arnold J
Citations:
[2009] EWHC 1094 (Ch), [2009] RPC 21, [2009] ETMR 53
Links:
Statutes:
Trade Marks Act 1994, First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks 5, Council Directive 76/768/EEC of 27 July 1976 on the approximation of the laws of the Member States relating to cosmetic products
Jurisdiction:
England and Wales
Citing:
Cited – Interflora, Inc and Another v Marks and Spencer Plc and Another ChD 22-May-2009
Each of the parties provided a service delivering flowers. The claimant had a trade mark, and the defendants each purchased the use of that trade mark and variations of it with a search engine (Google) so that a search under the trade mark produced . .
Cited – Quads 4 Kids v Campbell 2006
. .
Cited – Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v Deenik ECJ 23-Feb-1999
The expressions complained of as trade mark infringements were ‘BMW specialist,’ ‘Specialised in BMWs’ and ‘Repairs and maintenance of BMWs’.
Held: The Court proceeded on the basis that this was an Art.5(1)(a) case of identical marks and . .
Cited – Arsenal Football Club plc v Reed ECJ 12-Nov-2002
The trade mark owner sought orders against a street vendor who sold articles using their marks. He asserted that the marks were not attached to show any quality, but were used by the fans as badges of allegiance.
Held: The function of a trade . .
Cited – Silhouette International Schmied GmbH and Co KG v Hartlauer Handelsgesellschaft mbH ECJ 16-Jul-1998
National Trade Mark rules providing for exhaustion of rights in Trade Marks for goods sold outside area of registration were contrary to the EU first directive on trade marks. A company could prevent sale of ‘grey goods’ within the internal market. . .
Cited – O2 Holdings Limited and O2 (UK) Limited v Hutchison 3G UK Limited ECJ 12-Jun-2008
Use of trade mark in coparative advertising
Europa Trade marks Directive 89/104/EEC Article 5(1) Exclusive rights of the trade mark proprietor Use of a sign identical with, or similar to, a mark in a comparative advertisement Limitation of the effects of a . .
Cited – Sebago and Maison Dubois et Fils SA v GB-Unic SA ECJ 1-Jul-1999
The fact that specific goods bearing a Trade Mark had been authorised for distribution within the EEA, did not mean that the relative trade mark rights had been exhausted. They would only be exhausted where the consent related to each individual . .
Cited – Robelco v Robeco Groep NV ECJ 21-Nov-2002
Europa Directive 89/104/EEC – Article 5(5) – Provisions on protection against use of a sign other than for the purposes of distinguishing goods or services – Extent of such protection – Signs similar to the mark. . .
Cited – Adam Opel AG v Autec AG, intervener: Deutscher Verband der Spielwaren-Industrie eV (Approximation Of Laws) ECJ 25-Jan-2007
Europa Reference for a preliminary ruling Trade Marks Article 5(1)(a) and (2), and Article 6(1)(b) of the First Directive 89/104/EEC Right of a trade mark proprietor to prevent use by a third party of a sign . .
Cited – Anheuser-Busch v Budejovicky Budvar, narodni podnik ECJ 16-Nov-2004
Agreement establishing the World Trade Organisation – Articles 2(1), 16(1) and 70 of the TRIPs Agreement – Trade marks – Scope of the proprietor’s exclusive right to the trade mark – Alleged use of the sign as a trade name. . .
Cited – Celine SARL v Celine SA (Approximation Of Laws) ECJ 18-Jan-2007
Celine SA, set up before 1945, traded in Paris creating and marketing clothes and accessories, and had a French registered trade mark Celine for clothes and shoes. Celine Sarl was set up in 1992 as successor to a business selling clothing and . .
Cited – Zino Davidoff SA v A and G Imports Ltd etc ECJ 20-Nov-2001
An injunction was sought to prevent retailers marketing in the EEA products which had been obtained outside the EEA for resale within the EEA but outside the controlled distribution system.
Held: Silence alone was insufficient to constitute . .
Cited – Van Doren + Q GmbH v Lifestyle sports + sportsewar Handelgesellschaft mbH and another ECJ 8-Apr-2003
The claimant was exclusive agent for the trademark holder for Germany. The defendant sold goods it had not bought from the claimant, but bearing the mark. The defendant alleged exhaustion of the claimant’s rights.
Held: The burden of proving . .
Cited – Peak Holding AB v Axolin-Elinor AB (formerly Handelskompaniet Factory Outlet i Loddekopinge AB) ECJ 30-Nov-2004
ECJ (Approximation Of Laws) Trade marks – Directive 89/104/EEC – Article 7(1) – Exhaustion of the rights conferred by a trade mark – Putting on the market of the goods in the EEA by the proprietor of the trade . .
Cited – Montex Holdings v Diesel (Free Movement Of Goods) ECJ 9-Nov-2006
Montex sold jeans in Ireland where the mark Diesel was not protected. The jeans were made by the manufacture of pieces in Ireland (including pieces with the mark on), exporting them under a customs seal procedure to Poland where they were made up . .
Cited – Bristol-Myers Squibb and others v Paranova ECJ 11-Jul-1996
ECJ 1. Reliance by a trade mark owner on his rights as owner in order to prevent an importer from marketing a product which was put on the market in another Member State by the owner or with his consent where . .
Cited – Pharmacia and Upjohn SA, formerly Upjohn SA v Paranova A/S ECJ 12-Oct-1999
ECJ Trade-mark rights – Pharmaceutical products – Parallel imports – Replacement of a trade mark. . .
Cited – Loendersloot v Ballantine and Son and others ECJ 11-Nov-1997
ECJ Article 36 of the EC Treaty – Trade mark rights – Relabelling of whisky bottles. . .
Cited – Parfums Christian Dior v Evora BV ECJ 4-Nov-1997
ECJ As a court common to more than one Member State which has the task of ensuring that the legal rules common to the three Benelux States are applied uniformly and reference to which is a step in the proceedings . .
Cited – Copad SA v Christian Dior couture SA, Vincent Gladel, as liquidator of Societe industrielle lingerie (SIL), Societe industrielle lingerie (SIL) ECJ 23-Apr-2009
ECJ Directive 89/104/EEC – Trade-mark law Exhaustion of the rights of the proprietor of the trade mark – Licence agreement – Sale of goods bearing the trade mark in disregard of a clause in the licence agreement . .
Cited – Boehringer Ingelheim KG and Others v Swingward Ltd and Another ECJ 23-Apr-2002
The applicant sought to restrict the right of parallel importers of its goods to repackage the goods, and re-supply them in packaging on which their trade mark had been re-applied.
Held: The prohibition of quantitative restrictions on imports . .
Cited – Michael Holterhoff v Ulrich Freiesleben ECJ 14-May-2002
A trade mark was found to have been used to describe a method of cutting precious stones, rather than to identify their producer. . .
Cited – Boehringer Ingelheim KG v Swingward Ltd ECJ 6-Apr-2006
Opinion – 1. In the present case the Court of Appeal (England and Wales) (Civil Division) seeks further guidance from the Court of Justice on the effect of the latter’s judgment in Boehringer Ingelheim and Others (‘Boehringer I’). (2) That case . .
Cited – Mastercigars Direct Ltd v Hunters and Frankau Ltd CA 8-Mar-2007
An allegation was made that Cuban cigars imported by the claimant infringed the trade marks of the respondents being either counterfeit or parallel imports, and were impounded. The claimant sought a declaration of non-infringement and their release, . .
Cited by:
Cited – Twentieth Century Fox Film Corporation and Another v Newzbin Ltd ChD 29-Mar-2010
The defendant operated a web-site providing a search facility of the Usenet news system which allowed its users to locate copies of films online for downloading. The claimant said this was an infringement of its copyrights.
Held: The defendant . .
Lists of cited by and citing cases may be incomplete.
Intellectual Property, European
Updated: 21 October 2022; Ref: scu.346317
