2018.07.04 EVE-3 Rules of E-commerce and Digital Environment · damaging the image which the TM...

Erling Vestergaard | Alicante | 4 July 2018

Rules of E-commerce and Digital EnvironmentA New Complex Arena of Disputes

Digital Display Advertising

Metatagging

Adwords

Marketplace Search Engine

Supplier Links

Limited Distribution Networks




Daimler Case, CJEU, C-179/15 (3 March 2016)

Facts• German Daimler holds a number of TM, incl. the international figurative TM



FactsHungarian Együd Garage • Engaged in retail sale and repair of Mercedes cars• Had a after-sales-service contract with Daimler 2007-2012• Were entitled to use the above TM as an authorised Mercedes dealer 2007-2012• Contracted online display advertising company MIT to provide online advertising 2007-2012• After end of contract withdrew all display advertising indicating a contractual link to Daimler,

however some advertising remained online



Court ruling• Use of the term ‘Authorised Mercedes Dealer’ in advertising constitues use of TM in the course

of trade affecting the origin function of the TM since it indicates an economic link between the companies

• An advertiser cannot be held liable for the independent actions of others with whom the advertiser has no direct or indirect dealings and who do not act by order and on behalf of that advertiser, but on their own initiative and in their own name

• Concluding that a third party, who is named in a website advertisement giving the impression that there is a commercial relationship between him and the TM holder, does not make use of that sign, where that advertisement has not been placed by that third party or, if that advertisement has been placed by that third party with the consent of the TM holder, where that third party has expressly requested the website to remove the advertisement

Metatagging

Metatagging

Metatagging

Best v Visys Case, CJEU, C-657/11 (11 July 2013)

Facts• Belgian Electronic Sorting Technology NV

(BEST) produce sorting machines • Visys NV produce sorting machines• Visys used the following metatags on the

website: ‘Best+Helius’, ‘Best+Genius’ a.o.

Metatagging





Court Ruling”... Article 2(1) of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, as amended by Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 and Article 2(a) of Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising, must be interpreted as meaning that the term ‘advertising’, as defined by those provisions, covers, in a situation such as that at issue in the main proceedings, the use of a domain name and that of metatags in a website’s metadata. By contrast, the registration of a domain name, as such, is not encompassed by that term. ”

Metatagging





Court Ruling”... Article 2(1) of Council Directive 84/450/EEC of 10 September 1984 concerning misleading and comparative advertising, as amended by Directive 2005/29/EC of the European Parliament and of the Council of 11 May 2005 and Article 2(a) of Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning misleading and comparative advertising, must be interpreted as meaning that the term ‘advertising’, as defined by those provisions, covers, in a situation such as that at issue in the main proceedings, the use of a domain name and that of metatags in a website’s metadata. By contrast, the registration of a domain name, as such, is not encompassed by that term.”

Adwords

Adwords

Adwords

Google v LVM Case, CJEU, C-236/08 (23 March 2010)

Facts• Entering ‘Louis Vuitton’ into the Google search engine triggered adwords for websites offering

non-genuine versions of LVM-products• The adwords used ‘Louis Vuitton’ visibly• Google offered advertisers the possibility of selecting, to that end, not only keywords which

corresponded to LVM’s TMs but also those keywords in combination with ‘imitation’, ‘replica’ and ‘copy’

Adwords


Court decision, liability of advertisers• The TM holder can prohibit advertising, on the basis of a keyword identical with that TM which

the advertiser has selected in regards to goods or services identical with those for which the TM is registered, in the case where that advertisement does not enable an average internet user, or enables that user only with difficulty, to ascertain whether the goods or services referred to therein originate from the TM holder or an undertaking economically connected to it or, on the contrary, originate from a third party

Adwords


Court decision, liability of search engine• A search engine which stores a keyword identical with a TM and organises the display of

advertisements on the basis of that keyword does not use that sign in the course of trade• Liability exemption (in regards to all legislation) from E-Commerce Dir. Art. 14 applies to

search engines hosting keywords if unaware of unlawful activity

Adwords

Bananabay Case, German Bundesgerichtshof, ruling 13 January 2011 (I ZR 125/07)

• The German Supreme Court (applying the Google-ruling) confirmed that users can book a third party TM as adword, as long as the resulting ad is shown in a specially marked advertising block that is visually set apart from the list of natural search results

• What is not allowed is any reference in that ad to the TM itself, the TM holder or the TM holder’s products and the URL shown in the ad must also indicate a different economic origin

• Internet users looking at the ad must be able to realise that this is not the TM holder offering its goods or services but a third party

Adwords

Portakabin Case, CJEU, C-558/08 (8 July 2010)

Facts• Portakabin Ltd holds Benelux TM ‘Portakabin’ for buildings and building materials• Primakabin BV sells second-hand

mobile buildings• Primakabin has bought ‘portakabin’

as adword used for advertisingPrimakabins sale of ‘used portakabins

Portakabin mobile building

Adwords

Portakabin Case, CJEU, C-558/08 (8 July 2010)

Court ruling• The use of the TM of the producer of the second hand goods is not in itself prohibited as an

adword for the second hand specialist reseller• A specialist reseller of second-hand goods under cannot be prohibited from using the TM to

advertise to the public its resale activities which include, in addition to the sale of second-hand goods under that mark, the sale of other second-hand goods, unless the sale of those other goods, in the light of their volume, their presentation or their poor quality, risks seriously damaging the image which the TM holder proprietor has succeeded in creating for its TM

Adwords

Interflora Case, CJEU, C-323/09 (22 September 2011)

Facts• Interflora Inc. holds the UK TM ‘Interflora’• Interflora runs a global flower delivery network• Marks & Spencer (M&S) is a retail chain for a variety of products including flowers• M&S bought adword ‘Interflora’ making advertising the ‘M&S Flowers Online’ flower delivery

service

Adwords

Interflora Case, CJEU, C-323/09 (22 September 2011)

Court ruling• The TM origin function is affected if internet users using the word ‘Interflora’, may incorrectly

be lead to believe that the M&S flower delivery service is part of Interflora’s commercial network [confusion by association]

• The relevant public comprises reasonably well-informed and reasonably observant internet users

• Took into consideration that Interflora’s network is composed of a large number of retailers which vary greatly in terms of size and commercial profile. In that situation it may be particularly difficult for the reasonably well-informed and reasonably observant internet user to determine, in the absence of any indication from the advertiser, is part of that network.




LUSH, [2014] EWHC 181 (ch), UK High Court of Justice, Chancery Division ruling 10 February 2014

Facts• Amazon operated a website with marketing and sale of a variety of products• On the Amazon website original products bearing the TM ‘LUSH’ (registered for cosmetics and

similar products) from the Cosmetic Warrior Company were not for sale• Some LUSH-branded products outside the registrered TM were sold however• Amazon had bought Google adword ‘LUSH’ creating advertisements, some using the word

LUSH, others not using the word



Facts• Amazon operated a website with marketing and sale of a variety of products• On the Amazon website original products bearing the TM ‘LUSH’ (registered for cosmetics and

similar products) from the Cosmetic Warrior Company were not for sale• Some LUSH-branded products outside the registrered TM were sold however• Amazon had bought Google adword ‘LUSH’ creating advertisements, some using the word

LUSH, others not using the word

Court RulingAdwords prioritised search results including the LUSH-brand was infringing, the others were not (closely following the Google Adwords Case) and not applying the Interflora Case, since the LUSH-case did not concern a commercial network



Facts• On the Amazon website searching the word LUSH would create a dropdown menu with

different variations of LUSH

Amazon websitesearch result for ‘LUSH’

Dropdown MenuContaining products directly competing with original LUSH-products (not visible here)

Amazon websitesearch result for‘LUSH’

Dropdown MenuContaining products directly competing with original LUSH-products (not visible here)

Court Ruling conc. Dropdown Menu: Infringement affecting the origin, advertisement and investment functions of the TMOrigin function: The average consumer would not without difficulty ascertain that the products did not originate from Cosmetic Warrier CoAdvertisement function: The ability of attracting customers relied on the quality of the reputation of the LUSH TM, which quality was bound to be damaged by Amazons marketing of competing products with no indication of originInvestment function: Cosmetic Warrior Co was a successful business with a reputation of ethical trading and had due to this decided not to market products on Amazon, which business practices some consumers found repugnant. The investment in reputation connected to the LUSH TM would thus be damaged.

Repeated use of the word ‘LUSH’ below seach box and in ‘Related Searches’Marketing the competing products visible her


Repeated use of the word ‘LUSH’ below seach box and in ‘Related Searches’Marketing the competing products visible her


Court Ruling conc. Repeated use of the word LUSH below search box and in ‘Related Searches’: Infringement affecting the origin, advertisement and investment function due to the same reasons

Use of the word ‘LUSH’ under the heading ‘Brand’ Linking to non-cosmetics genuine products branded ‘LUSH’ by another manufacturer


Use of the word ‘LUSH’ under the heading ‘Brand’ Linking to non-cosmetics genuine products branded ‘LUSH’ by another manufacturer


Court Ruling conc. Use of the word ‘Lush’ under the heading ‘Brand’: No infringement due to the fact that there was actual marketing of genuine branded products that did not compete with the Cosmetic Warrier Co

Supplier Links

Supplier Links

Supplier Links

Diesel v Fabric, V-0160-05, Danish Commercial and Maritime Court ruling 3 April 2007

Facts• Fabric A/S was a Danish limited liability company• Fabric ran a website fabric.nu and connected webshop with sales of clothing from different

producers• Diesel did not deliver directly to Fabric, but Diesel products were for sale on the website• The website had a linking repository ‘Suppliers’ that

included a link to the official ‘Diesel’ website

diesel.com

Supplier Links





diesel.com

Court Decision”...Fabric Denmark's use of the term 'supplier' in fabric.nu in connection with a link….and the use of the term 'supplier' in the context of the DIESEL trade mark was liable to give a false impression about the Fabric stores relationships with the Diesel Group, including false notions of Fabric stores were authorized dealers. The specified use was also a conscious exploitation of the reputation and image associated with DIESEL ... The use of the mark DIESEL therefore went beyond what was necessary to inform that the Fabric stores sold DIESEL-products …”

Supplier Links





diesel.com


Supplier Links





diesel.com





Coty Case, CJEU, C-230/16 (6 December 2017)

Facts• Coty Germany is a supplier of luxury cosmetics• Coty had a distribution agreement with Parfümerie Akzente Germany• Akzente had to preserve the high-end luxury status of Coty brands: the décor, furnishing of the

sales location, the selection and presentation of goods, had to highlight the luxury character of the brand

• Sales on the internet should be done in order to preserve the luxurious character of the brand and through an “electronic shop window” of the authorized Coty store only

• Akzente however sold goods through amazon.de


Coty Case, CJEU, C-230/16 (6 December 2017)

Facts• Coty Germany is a supplier of luxury cosmetics• Coty had a distribution agreement with Parfümerie Akzente Germany• Akzente had to preserve the high-end luxury status of Coty brands: the décor, furnishing of the

sales location, the selection and presentation of goods, had to highlight the luxury character of the brand

• Sales on the internet should be done in order to preserve the luxurious character of the brand and through an “electronic shop window” of the authorized Coty store only

• Akzente however sold goods through amazon.de

Court Decision• ”...a selective distribution system for luxury goods designed, primarily, to preserve the

luxury image of those goods complies with that provision to the extent that resellers are chosen on the basis of objective criteria of a qualitative nature that are laid down uniformly for all potential resellers and applied in a non-discriminatory fashion and that the criteria laid down do not go beyond what is necessary.”

• “…not precluding a contractual clause…which prohibits authorised distributors….from using…third-party platforms for the internet sale of the contract goods…”

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2018.07.04 EVE-3 Rules of E-commerce and Digital Environment · damaging the image which the TM...

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