While the High Court found that eBay UK was not liable for trademark infringement through its offer for sale of fake L'Oreal goods, it asked the ECJ for clarification on key aspects of the case.
Following the referral, parties in the case were required to meet again at the High Court to formulate the precise terms that the ECJ would examine. Among the points raised is whether eBay UK's use of sponsored links identical to brands is liable for injunction.
Most of the questions look to the European Trade Marks Directive and the Community Trade Mark (CTM) Regulation for guidance, but also cite other areas of European law. Published by the ECJ together with broader queries on counterfeiting, the questions relating to eBay's liability are:
- In cases where an e-commerce operator purchases the use of a sign identical to a registered mark, for the purpose of displaying it to web users as a sponsored link, does this constitute a 'use' of that sign under the Directive and Regulation?
- If the sponsored links lead users to the sale of goods identical to signs that have been placed on the website by third parties, does this constitute a use of the sign 'in relation to' the infringing goods by the online operator?
- In cases where the goods offered for sale on these websites have not been merchandised within the European Economic Area (EEA) – or with the brand owner's consent – does the offer for sale online imply that the goods have been advertised within the brand's registered territory? Or is it the brand owner's responsibility to prove that this is the case?
- How are the answers to the first three questions affected if the brand owner's complaint concerns the display of a registered brand or sign, rather than a sponsored link, on the relevant website?
- This question cites Article 14 of the European E-Commerce Directive – a clause that sets liabilities for online service providers who store third-party information. The Article provides limited liability, as long as the service provider has no awareness of illegality represented by the information; or takes swift action to remove it if illegality becomes clear. It asks:
If it can be shown via the Directive and Regulation that the branded advertisement is aimed at consumers in the brand's territory of registration,
- Does that use include the storage of third-party information, as defined in Article 14?
- Is the online operator exempt from liability for activities that fall only partially within the scope of Article 14?
- Does an online operator who has foreknowledge that branded advertisements lead to infringing goods meet the 'awareness' test of Article 14?
- When a third party has used an e-commerce operator in order to infringe a registered brand, are Member States required to ensure that the brand owner can obtain an injunction against the operator to prevent the infringement? And if so, what should be the injunction's scope?
In his original High Court ruling, Mr Justice Arnold explained the urgent need to refer the case. 'I consider that there are clearly some issues of law which are difficult and important,' he said. 'If I did not refer, I consider that it is highly likely that the Court of Appeal would do so.' He added: 'This is one of a number of cases around Europe both between the same parties and between other parties raising the same or similar issues. The sooner the courts of Europe are able to arrive at common answers, the better.'
As the questions were referred by the UK High Court, the ECJ has asked the UK Intellectual Property Office (UK-IPO) to submit observations on the case by 10 December. The questions will then be examined in deliberations by ECJ IP specialists, with a publication date for the results pending announcement.