L'Oréal SA v eBay International AG
An online marketplace is not itself using trade marks displayed in its users' listings, but it can be liable if it plays an active role, and national courts can order it to take measures to prevent infringements.
Facts
L'Oréal complained that eBay's website was being used by sellers to sell counterfeit L'Oréal products, and genuine products that had not been put on the market in the EU with its consent, and that eBay had bought keywords on search engines that led users to listings of infringing goods. L'Oréal sued eBay and some individual sellers. The High Court referred questions to the Court of Justice.
Legal principle
The Court of Justice held that the operator of an online marketplace does not use trade marks displayed in offers for sale made by its users, but that it uses marks in its own advertisements if it buys keywords. An operator can rely on the hosting exemption in the E-Commerce Directive only if it does not play an active role that gives it knowledge of, or control over, the data stored, for example by optimising the presentation of the offers or promoting them. If it is aware of facts or circumstances from which the illegality is apparent and does not act expeditiously, it loses the exemption. National courts can order online marketplaces to take measures that contribute to preventing further infringements.
Related cases on trade marks: infringement
- Arsenal Football Club plc v Reed Case C-206/01, [2002] ECR I-10273
- Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc Case C-39/97, [1998] ECR I-5507
- Cartier International AG v British Telecommunications plc [2018] UKSC 28, [2018] 1 WLR 3259
- Comic Enterprises Ltd v Twentieth Century Fox Film Corp [2016] EWCA Civ 41, [2016] FSR 30
- General Motors Corp v Yplon SA (Chevy) Case C-375/97, [1999] ECR I-5421
- Google France SARL v Louis Vuitton Malletier SA Joined Cases C-236/08 to C-238/08, [2010] ECR I-2417
- Intel Corp Inc v CPM United Kingdom Ltd Case C-252/07, [2008] ECR I-8823
- Interflora Inc v Marks & Spencer plc [2014] EWCA Civ 1403, [2015] FSR 10
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