2011 years, Internet shopping is on the rise, But the EU market has seen various forms of IP infringement relying on the remote nature of the Internet. The European Court of Justice L'Oréal vs. eBay In the ruling, Conduct sorting out the behaviors and responsibilities of selling infringing commodities through e-commerce platforms, At the same time, it makes a detailed analysis of the responsibility and obligation of the e-commerce platform operators when their users use the platform service infringement. For web operators of e-commerce platforms accessible within the EU domain, And sellers of goods to the EU through online platforms, The ruling has important guiding significance. 　　 (Because of the many issues involved in this case, Therefore, the whole case depends on the type of infringing goods and the responsibility of the infringer, This article is divided into two parts, This is the first part "Infringing goods" )

　　 [background]

　　L'Oréal It's a perfume company, A manufacturer and distributor of cosmetics and hair care products, With many UK national registered trademarks and EU registered trademarks. L'Oréal Implement the closed authorized distribution model, Its commodity distributors shall not supply other distributors without permission.

　　eBay Is an e-commerce platform operator, Users registered on the platform, You can use the platform to display and sell products on the web, eBay A pro rata cut of transactions completed through the platform. Both parties must agree eBay The protocol content provided can only use the platform services, The agreement explicitly prohibits the sale of counterfeit goods and goods that violate trademark rights. In addition to routine maintenance and operation of the platform, eBay And through a third party (Search engine company) Advertising services provided, Publicize and promote its own platform services, And the sales activities of users who use the platform to sell goods.

　　2007 years 5 month 22 day, L'Oréal to eBay Send a letter, Warned its platform users of sales violations L'Oréal The situation of goods with trademark rights: Including counterfeit goods, Freebies and samples, There is a lack of outer packing, and L'Oréal Goods intended for sale in North America. Cause pair eBay The response to the warning letter was unsatisfactory, L'Oréal Multiple infringement cases have been filed in several EU member states, In a complaint to the High Court of England, Claim identification eBay As an e-commerce platform operator, They shall be jointly liable for infringements by their users; eBay Display on the platform website L'Oréal Related trademark, And in a third party "Keyword search" Used in advertising services L'Oréal Act of trademark, Infringement of plaintiff's trademark rights; simultaneously, Request pair eBay Injunctive measures, Avoid the expansion of trademark right losses.

　　2009 years 7 month 16 day, The British High Court decided to stay the case, The European Court of Justice is requested to make a preliminary ruling on the following issues: Sold through e-commerce platform "unconventional" Whether the commodity infringes the trademark right; An advertising campaign that uses another person's registered trademark as a search keyword, Whether it is an act of use in the sense of trademark; and, A third party uses the services of the Platform to commit infringement, Whether a ban can be imposed on e-commerce platform operators?

　　 [conclusion]

　　Use e-commerce platforms to sell "unconventional" Judgment of infringement of goods

　　The European Court of Justice reiterated in its ruling, The exclusive rights granted by law to trademark owners can only be used against economic activity operators, That is, the trademark owner has the right to prohibit others in the course of trade activities, Unauthorized use of a mark identical to or similar to its trademark (Anheuser-Busch case (C-245/02) , L' Oréal and Others case (C-487/07) ) . Individuals use e-commerce platforms to conduct transactions, If sales volume, Frequency and other facts indicating that the individual's sales activities have gone beyond private transactions, Shall be regarded as "Trade activity" .

　　1. sales "Parallel entry" commodity

　　basis "Directive of the First Council of the European Union on the harmonization of trademark legislation in the Member States (The first 89/104/EEC No) " The first 5 Articles and regulations 7 article, and "European Community Trade mark Regulation (The first 40/94 No) " (defunct, Current norm "Eu trade mark regulation (The first (EU) 2017/1001 No) " ) The first 9 Articles and regulations 13 Provision of article, The EU trademark owner has the right to prohibit others from entering the EEA without permission/The EU region imports goods bearing its trademark, But the product is entering the European Economic Area for the first time/The retransaction after the market in the EU area is not controlled by the trademark owner.

　　The European Court of Justice held that, The above specification shall be understood as, As long as the target group of consumers for the goods in question is located in the European Economic Area/Within the European Union area, That falls within the scope of the code. But only exist "Internet users can access disputed websites within the domain of trademark rights" fact, It is not sufficient to identify the relevant consumer group as located in this area. The accepting court shall rely on all the facts of the case, Specifically analyze and judge the target consumer group of the disputed goods in the field.

　　The website domain name of the e-commerce platform in question is ". uk" , Therefore, In the absence of evidence to the contrary, It is safe to assume that the target consumer group of the products sold on the website includes at least British consumers, It belongs to the validity scope of the right of the trademark owner, That is to say, the trademark owner has the right to prohibit the above sales without its permission.

　　2. Sell samples and giveaways, etc "Not for sale"

　　Admissibility court finding, Plaintiff in the case L'Oréal For advertising and promotion purposes, Provide small packages to its authorized distributors "sample" and "gift" , To attract consumers to buy the corresponding goods, "sample" and "gift" Printed on the package "Not for sale" word.

　　The European Court of Justice stated that, As before in similar controversies (Silberquelle case, C-495/07) As stated in the ruling, To promote the sale of goods, When the trademark owner presents free products affixed with the trademark to consumers, There is no purpose to market it. Therefore, In the absence of evidence to the contrary, Such products shall not be deemed to have been placed on the market by or with the consent of the trademark owner. A third party will attach a trademark of another "Not for sale" The act of selling on an online platform, Belong to "First launch" Sales behavior of, May be prohibited by the trademark owner.

　　3. Sell goods that lack outer packing

　　The hearing court found in hearing the case, There are eBay Registered users sell goods without the original packaging on the platform. L'Oréal Think that, The act of selling goods after removing the original packaging, violate "Directive of the European Council on harmonisation of cosmetic specifications in the Member States (The first 76/768/EEC No) " (defunct, Existing law "European Parliament and Council Regulation on Cosmetics (The first 1223/2009 No) " ) The first 6 (1) Article on the requirements of cosmetics placed on the market must be labeled with relevant information; and, For perfumes and cosmetics, etc, Outer packaging is an important part of the image of a commodity, Remove the outer packing, It will damage the image of the product, And damage the reputation of the trademarks used on the goods.

　　The European Court of Justice said in its ruling, First of all, Given the wide range of perfumes and cosmetics, Whether removing the outer packaging will damage the image of the goods——And damage the reputation of the trademark attached to it, Case-by-case analysis should be carried out. Just like the presiding officer in this case (AdvocateGeneral) In its legal opinion, Remove perfume and makeup from packaging, Sometimes it may be more effective to convey the high-end and luxury image of the goods, In other cases, May actually damage the image of the product. Circumstances that may tarnish the image of a product, For example, A container compared to a commodity, The outer packaging of commodities plays an equal or even more important role in maintaining the image of commodities established by the trademark owner and its authorized dealers; Another example is, After removing the outer packing, Commodity deficiency "European Union regulation 76/768/EEC Number instruction" The first 6 (1) The information required by the article, So that the product image is damaged, And so on. In this case, It is up to the trademark owner to prove the fact that the image of the goods has been damaged.

　　As for removing the outer packaging of goods, Lead to a shortage of goods "European Union regulation 76/768/EEC Number instruction" The first 6 (1) The necessary information specified in this article, For example, Manufacturer or distributor name, etc, trademark "Distinguish the function of commodity origin" unattainable, The trademark owner may use this as an excuse, Prohibit others from selling goods with the outer packaging removed.

　　author: Liu Dan, Esabarry Legal Counsel　　source: Esabaril (ELZABURU) Intellectual property rights