L’Oréal v eBay [2009] EWHC 1094 (Ch) is a test case. It concerned what Arnold J described succinctly as the following questions:
Are eBay Europe liable for trade mark infringements committed by their users? Do eBay Europe themselves commit infringements by using trade marks in relation to infringing goods?
The judgment is lengthy and deals with the many well rehearsed arguments in full. However, despite 482 paragraphs of careful consideration, it does seem that the crucial questions remain open, pending the result of a reference to the European Court of Justice. Armold J concluded as follows:
(i) The Fourth to Tenth Defendants [ the sellers of goods on eBay] have infringed the Trade Marks. In the case of the Fourth to Eighth Defendants the goods they sold were put on the market outside the EEA and L’Oréal did not consent to those goods being put on the market within the EEA. In the case of the Ninth and Tenth Defendants the goods they sold were counterfeits.
(ii) Whether the sale by sellers on the Site of testers and dramming products and of unboxed products amounts to an infringement of the Trade Marks depends upon questions of interpretation of the Trade Marks Directive as to which the law is unclear (see paragraphs 319-326 and 331-342 above). Although these questions are academic so far as the acts committed by the Fourth to Tenth Defendants are concerned, they are potentially relevant to the question of what relief, if any, L’Oréal are entitled to. Accordingly, guidance from the ECJ is required on these points.
(iii) eBay Europe are not jointly liable for the infringements committed by the Fourth to Tenth Defendants.
(iv) Whether eBay Europe have infringed the Link Marks by use in sponsored links and on the Site in relation to infringing goods again depends upon a number of questions of interpretation of the Trade Marks Directive upon which guidance from the ECJ is required (see paragraphs 388-392, 393-398 and 413-418 above).
(v) Whether eBay Europe have a defence under Article 14 of the E-Commerce Directive is another matter upon which guidance from the ECJ is needed (see paragraphs 436-443 above).
(vi) As a matter of domestic law the court has power to grant an injunction against eBay Europe by virtue of the infringements committed by the Fourth to Tenth Defendants, but the scope of the relief which Article 11 requires national courts to grant in such circumstances is another matter upon which guidance from the ECJ is required (see paragraphs 455-465 above).
There are numerous interesting passages in the judgment, which can be read in full here.
