FACULTY OF LAW
Lund University
Astrid Andersson
The distinction between primary and
contributory trademark infringement in the
EU
JAEM03 Master Thesis
European Business Law
30 higher education credits
Supervisor: Ulf Maunsbach
Spring semester 2015
Contents
SUMMARY
1
SAMMANFATTNING
2
PREFACE
3
ABBREVIATIONS
4
1
5
2
3
4
INTRODUCTION
1.1
Background
5
1.2
Purpose and question formulation
6
1.3
Limitations
6
1.4
Method and material
7
1.5
Disposition
8
EU TRADEMARK LAW – THE LEGAL FRAMEWORK
9
2.1
Introduction to EU trademark law
9
2.2
EU trademark Regulations
11
2.3
The Paris Convention and the TRIPS Agreement
12
THE FUNCTIONS OF TRADEMARKS AND SCOPE OF PROTECTION
15
3.1
The functions of trademarks
15
3.2
Rights conferred by a trademark
16
3.3
Special protection for well-known trademarks
20
3.4
Restrictions on the trademark right
23
3.5
Rights conferred by a copyright and related rights
25
CONTRIBUTORY INFRINGEMENT AND EU LAW
27
4.1
Contributory liability for trademark infringement
27
4.2
What do the Directives say?
28
4.2.1
The E-Commerce Directive
29
4.2.2
The Enforcement
30
4.2.3
The Infosoc Directive
30
4.3
Contributory infringement on the internet
31
4.2.1
The Google France and Google case
32
4.2.2
The L’Oréal v eBay case
34
4.2.3
The UPC Telekabel case
36
4.4
6
38
4.4.1
The UDV North America case
38
4.3.2
The Red Bull case
40
4.3.3
Opinion of AG Kokott in Red Bull
42
4.5
5
Real life contributory infringement
Contributory infringement in Germany, the United Kingdom and France
4.4.1
Germany
43
4.4.2
The United Kingdom
44
4.4.3
France
44
ANALYSIS
43
46
5.1
The distinction between primary and contributory trademark infringement 46
5.2
Towards harmonisation?
CONCLUSION
50
53
BIBLIOGRAPHY
55
TABLE OF CASES
59
Summary
There are two different kinds of trademark infringement: primary and contributory. Primary
infringement is regulated in Article 5 TMD, and this Article has been subject to numerous
judgments from the CJEU. On the other hand, contributory infringement is still a national matter
and there is no common definition throughout the EU of what a contributory infringement
actually is.
With the CJEU’s judgments in Google France and Google and L’Oréal v eBay, it has been
discussed whether an ISP such as Google or eBay can be liable for trademark infringement. The
CJEU has come to the conclusion that an ISP such as those at issue cannot be liable for primary
infringement, for example when allowing use of keywords that correspond to other parties
trademarks. However, an ISP can still be liable for contributory infringement if it does not fulfill
the conditions in the E-commerce Directive.
The CJEU has in its judgments concerning primary trademark infringement, Article 5 TMD,
focused on whether there has been “use” by the alleged infringer, and whether the alleged “use”
of the trademark has been detrimental to the functions of the trademark. In cases such as Google
France and Google and L’Oréal v eBay, the CJEU has held that for an ISP to avoid contributory
liability in accordance with the E-commerce Directive, the ISP must only provide with the
technology and have a neutral and passive role. The distinction between primary and
contributory infringement, taken by the CJEU, can hence be “use” on the one hand and “active
role” on the other. What differs “active role” from being neutral and passive might lie in a
prerequisite such as negligence.
Different interpretations of contributory infringement might be detrimental to the legal
certainty, and can in the long run harm the free movement of goods and services. Therefore, a
common definition would be appreciated. Factors to take into account when defining a
contributory infringement might be whether the alleged infringer has acted negligent, what role
it has played, the nature of the service (whether the service provider is neutral or active) etc.
1
Sammanfattning
Det finns två olika sorters varumärkesintrång: primära och sekundära. Primära intrång regleras
i Artikel 5 i varumärkesdirektivet, vilken har varit föremål för flertalet domar från EUdomstolen. Det finns idag ingen allmän definition av ett sekundärt intrång, eftersom
medverkansansvar regleras i nationell rätt.
EU-domstolens domar i Google France and Google och L’Oréal v eBay, har föranlett en
diskussion om huruvida en söktjänstleverantör såsom Google och eBay kan hållas ansvariga
för varumärkesintrång. Enligt EU-domstolen är så inte fallet när en söktjänstleverantör, såsom
Google, tillåter sina kunder att använda andras varumärken i så kallad ”keyword advertising”.
Detta till trots, en söktjänstleverantör kan åläggas medverkansansvar om denne inte uppfyller
de krav som ställs upp i E-handelsdirektivet.
EU domstolen har i sina domar gällande primära varumärkesintrång, Artikel 5 i
varumärkesdirektivet, fokuserat på huruvida det har förekommit ”användning” av varumärket
och i så fall huruvida detta har skadat varumärkets olika funktioner. I rättsfall såsom Google
France and Google och L’Oréal v eBay, har EU domstolen klargjort att för att undvika
medverkansansvar i enlighet med E-handelsdirektivet, måste söktjänstleverantören endast
tillhandahålla med tekniska hjälpmedel samt utöva en roll som är i sin natur neutral och passiv.
Gränsdragningen mellan primära och sekundära intrång kan därför rimligtvis ligga mellan
rekvisiten ”användning” och att ha en ”aktiv roll”. Vad som skiljer mellan att spela en ”aktiv
roll” jämfört med en passiv och neutral roll kan ligga i rekvisit såsom oaktsamhet.
Olika tolkningar av sekundära intrång och dess medverkansansvar kan leda till en situation då
rättssäkerheten ställs på sin spets, och kan i det långa loppet vara ett hinder mot den fria
rörligheten av varor och tjänster. En gemensam definition av sekundära intrång skulle därför
troligtvis vara mycket uppskattad. Vid utformandet av en sådan definition finns det flera
faktorer som måste tas i beaktande, exempelvis vilken roll medverkaren har haft (dvs neutral
eller aktiv), huruvida denna har handlat oaktsamt etc.
2
Preface
Eleven semesters have come to an end. Realizing that this thesis is the last one, that there will
be no more exams, is very hard. Even though it is a bit scary, I am longing to start working as
a lawyer, to be able to practice what I have learnt.
I would like to thank my supervisor, Ulf Maunsbach, for his support and valuable input, as well
as for all interesting conversations we have had.
Thank you.
Flyinge, May 2015
Astrid Andersson
3
Abbreviations
AG
Advocate General
CFI
Court of First Instance
CJEU
Court of Justice of the European Union
CTM
Community Trade Mark
CTMR
Community Trade Mark Regulation
EU
European Union
GC
General Court
IPR
Intellectual Property Right
ISP
Internet Service Provider
TFEU
Treaty on the Functioning of the European Union
TMD
Trademark Directive
TRIPS
Agreement on Trade-Related Aspects of Intellectual
Property Rights
UK
United Kingdom
WIPO
World Intellectual Property Organization
WTO
World Trade Organisation
4
1 Introduction
1.1 Background
The national dispute between Google and Louis Vuitton1 lasted for several years but finally, in
2010, the CJEU gave its ruling. An internet service provider (ISP) does not use a trademark
within the meaning of Article 5 of the Trademark Directive (TMD), when it allows its customers
to use other trademarks in keyword advertising. An ISP can therefore not be liable for trademark
infringement based on the Article mentioned. However, that does not necessarily mean that
Google could not be liable for contributory infringement, which was up to the referring court
to determine.
Infringement of intellectual property can be either primary or contributory. A primary
infringement is rights specific, meaning that the infringement depends on the rights conferred
by the specific intellectual property. These rules are harmonised.
With contributory infringement, it is different. There is no specific definition of what a
contributory infringement actually is, so contributory infringement is not harmonised to the
same extent as primary infringement. However, several Directives (such as, for example, the
E-commerce Directive and the Enforcement Directives that will be discussed in chapter 4) state
that a right holder should be able to apply for an injunction against an “intermediary”. The Ecommerce Directive also contains some provisions which describe when an ISP cannot be held
liable for contributory infringement. There is hence no need to, when it comes to contributory
infringement, distinguish the different kinds of intellectual property from each other. The
determination of what is a contributory infringement is thus a national matter, and the different
Member States all have different tort law. Since there are different views of what a contributory
infringement is, this might lead to a threat against the legal certainty for companies that act on
different markets.
If we go back to the Google France and Google case, the CJEU said that Google could avoid
liability if its role was passive and if Google only provided its customers with the technology.
1
Google v Louis Vuitton Melletier et al, C-236/08, C-237/08 and C-238/08, EU:C:2010:159. This case will be
analysed in chapter four of this thesis.
5
But how far reaching are these requisites, and when do they become “use” instead? It is this
distinction, between primary and contributory infringement, that will be analysed in this thesis.
1.2 Purpose and question formulation
The purpose of this thesis is to analyse the distinction between primary and contributory
infringement of intellectual property.
Primary infringement is rights specific, since each type of intellectual property has different
rights conferred by it. On the other hand, there is no need to distinguish contributory
infringements from each other depending on what type of intellectual property the infringement
concerns. The thesis will, however, focus on trademark law, but since contributory infringement
is a general issue, it will also include some aspects of copyright and related rights law.
The main question analysed is “What is the view taken by the CJEU, on the distinction between
primary and contributory trademark infringement?”
The author will also analyse the question: Does the view differ depending on whether it is an
internet related or a real life contributory infringement?
Finally, since there are today no common definition in the EU on what is a contributory
infringement of intellectual property, the third question discussed is: Do we need a common
definition on contributory infringement of intellectual property rights in the EU?
1.3 Limitations
Primary infringement depends on the rights conferred by the specific intellectual property law,
but contributory infringement does not has to be distinguished in that way. Therefore, it would
have been interesting to make a comparison of the judgments from the CJEU on the different
areas, to see whether the judgments differ depending on what specific intellectual property right
it concerns. However, due to lack of space this thesis will focus on trademark law but will, as
already stated, include some aspects of copyright and related rights law.
The relationship between intellectual property law and competition law is interesting, and the
protection of intellectual property rights does raise competition concerns, and can be harmful
6
to the internal market. But, for the same reasons as above, the author has decided not to make
an in-depth analysis of these concerns.
1.4 Method and material
The author has used an EU legal method when writing this thesis.
The different sources of law that can be used when working with this method are, among others,
the Treaties2, the Charter of Fundamental Rights, case law from the CJEU, general principles,
international agreements etc.3
The Treaties are at the top of the hierarchy of norms in the EU, followed by general principles
(such as proportionality, legal certainty and fundamental rights) and the legislative acts (such
as Directives, Regulations and decisions).4
According to Article 19(1) TEU, the CJEU shall ensure that in the interpretation and application
of the Treaties the law is observed. The CJEU has been entrusted with the functions of a
constitutional court, so case law from the CJEU is hence fundamental and of great importance
for legal arguments.5
Case law is central to this thesis. The author is of the opinion that for problems concerning
trademark law, case law is the most valuable source of law. There are no specific Articles in
the Treaties that deal with this field of law in a practical way (compared to, for example,
competition law where Articles 101 and 102 TFEU are extremely important).
Further, emphasis has been given to provisions in different Directives that are important for
trademark law as well as intellectual property law in general, such as the TMD, the Enforcement
Directive, the Infosoc Directive and the E-commerce Directive. Many cases (that concern
trademark law) referred to the CJEU for preliminary ruling concern an interpretation of the
provisions in the TMD, and for Internet related cases the E-commerce Directive has been of
great importance.
The author is of the opinion that opinions from the advocate generals are interesting and a good
complement to judgments from the CJEU. However, in this thesis they have not been used very
much as valuable sources of law but rather as a contribution to the legal discussion.
2
The Treaty of the European Union (TEU) and the Treaty on the Functioning of the European Union (TFEU).
Hettne- Otken Eriksson, 2011, p. 40.
4
Craig – de Búrca, 2011, p. 109, 112.
5
Ibid. p. 49 and Eckes, 2013, p. 173.
3
7
Lastly, reputable scholars have written the doctrine used in this thesis. Doctrine does not have
a high hierarchal status so the author has therefore obviously not given it the same status as a
source of law as with the cases from the CJEU. However, the doctrine has still been very
valuable and useful. It has helped the author with the interpretation of different cases, and has
been useful in balancing judgments. Further, doctrine has been of great importance for the more
theoretical chapters.
The author has chosen to analyse the material from the rightholder’s point of view.
There is a trend in the EU that goes towards a strong legal protection, and it can be discussed
whether the judgments from the CJEU referred to in this thesis are in line with that trend.
1.5 Disposition
The thesis consists of six chapters.
The second chapter gives the reader an insight into the legal framework of EU trademark law,
and also information about how the views on trademarks have evolved over time.
Since this thesis intends to analyse the distinction between primary and contributory trademark
infringement, the third chapter discuss the rights conferred by a trademark and different forms
of primary trademark infringement. A brief comment on primary infringement in copyright and
related rights will also be given in this chapter.
The following chapter will then discuss contributory infringement. Contributory infringement
is a general issue, so this chapter will discuss both contributory infringement of trademark rights
as well as contributory infringement of copyright and related rights. However, due to lack of
space emphasis will be given to trademark cases.
In chapter five the author will analyse the material from the previous chapters followed by a
short conclusion in chapter six.
8
2 EU trademark law – the legal
framework
2.1 Introduction to EU trademark law
The view on intellectual property within the EU is, in general, positive. Intellectual property
has great economic value, so it is not surprising that the Regulations surrounding it have gone
in the direction towards a stronger legal protection. However, this legal protection must be
balanced with one of the core objects with the union; the importance of the internal market and
the free movement of goods and services. Differences in national trademark legislation might
lead to difficulties for the internal market to function correctly, and it will especially lead to
restrictive practices for some companies. Therefore, the Regulations concerning intellectual
property in the EU build upon several objects. One of the most important objects is the “level
playing field”, meaning that the legal protection of intellectual property in the different Member
States shall be harmonised to the extent that the companies can compete on similar conditions
(which will encourage the free movement of goods and services). Another core object is to
strengthen European companies’ competitiveness against companies from, for example, the
USA and China.6 Therefore, the efforts to harmonize trademark law in the EU build upon the
need and wish to create a proper functioning internal market, and not on a desire to overcome
conceptual divergences.7 However, the first judgments from the CJEU on trademarks were, for
trademark owners, disastrous. The CJEU showed lack of comprehension of even the basic
functions of a trademark, and trademarks were looked down on as “second-class industrial
property rights”.8 Patents and copyright were seen by the CJEU as intellectual property that
stimulated and rewarded scientific process and literary creativity. Trademarks, on the other
6
Ibid. p. 14.
Kur, 2008, pp. 151-152. For example, when the Treaty of Rome came into force 1958, the views on intellectual
property were quite different between the Member States. In France the rights conferred by a trademark were not
essentially different from the rights concerning patents and copyright. In Germany, on the other hand, the focus
laid on the origin function of the trademark. The origin function was the sole and mandatory guideline regarding
the protection, and acquisition, of trademarks.
8
Keeling, 2003, p. 153.
7
9
hand, “were despised as vulgar commercial rights hardly worth of protection”.9 In the Sirena
v Eda case10, Advocate General Dutheillet de Lamothe stated:
“Both from the economic and from the human point of view the interests protected by patent
legislation merit greater respect than those protected by trade marks”.11
“From the human point of view, the debt which society owe to the “inventor” of the name “Prep
Good Morning” is certainly not of the same nature, to say at least, as that which humanity owes
to the discoverer of penicillin”.12
Later on, in the Hoffmann- La Roche v Centrafarm case13, the CJEU took another approach. In
para. 7 of the judgment, the CJEU said that:
“…regard must be had to the essential function of the trade mark, which is to guarantee the
origin of the trade-marked product to the consumer or ultimate user, by enabling him without
any possibility of confusion to distinguish that product from products which have another
origin”.
The judgment in Hoffmann- La Roche v Centrafarm was the beginning of a very different view
on trademarks.14 Finally, in the HAG II case15, the CJEU once again made clear the value and
importance of trademarks by saying:
“Trade mark rights are, it should be noted, an essential element in the system of undistorted
competition which the Treaty seeks to establish and maintain. Under such a system, an
undertaking must be in a position to keep its customers by virtue of the quality of its products
and services, something which is possible only if there are distinctive marks which enable
customers to identify those products and services. For the trade mark to be able to fulfil this
role, it must offer a guarantee that all goods bearing it have been produced under the control
of a single undertaking which is accountable for their quality.”16
9
Keeling, 2003, p. 153.
Sirena SRL v Eda SRL, C-40/70, ECLI:EU:C:1979:236.
11
Sirena SRL v Eda SRL, C-40/70, Opinion of AG Dutheillet de Lamothe, p. 87.
12
Ibid.
13
Hoffmann- La Roche v Centrafarm, C-102/77, ECLI:EU:C:1978:108.
14
Keeling, 2003, p. 156.
15
SA SNL- SUCAL NV v HAG GF AG, C-10/89, ECLI:EU:C:1990:359
16
Ibid. para. 13.
10
10
The judgments from the CJEU have changed radically, and as Keeling says “…the Court can
only be applauded for admitting to past errors and recognising the importance of trademarks
in the clearest of terms”.17
2.2 EU trademark Regulations
EU Trademark law builds upon the Trademark Directive (TMD)18 and the Community
Trademark Regulation (CTMR)19. They have been developed together, side by side, as two
means to remove barriers of trade within the internal market.20
The discussion on whether there should be a community trademark system started in 1958. The
legislators saw this as a prerequisite for a well-functioning internal market, and as a way to
improve integration throughout the community. However, it took more than 30 years before the
first CTMR was presented21.22
The CTMR has three characteristics. It is an autonomous, supranational and independent
system, meaning that it exists along with the national trademark legislation in the Member
States. It is directly applicable, so every citizen has the right to invoke it. Further, the CTMR is
unitary. A CTM enjoys the same protection and legal effect in all Member States, with one
single application. It is a form of “all or nothing” – if you file for a CTM, that application will
be processed in all Member States, meaning that it is not possible to only choose some Member
States when filing an application. The third characteristic is coexistence. A CTM does not
replace national trademark rights. The CTMR and the national legislation exist alongside each
other, and on an equal basis.23
17
Keeling, 2003, p. 157.
Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the
laws of the Member States relating to trade marks. Henceforth: The TMD.
19
Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark. Henceforth: The
CTMR. Note that the name “Community trade mark” will change to “European trade mark”.
20
Max Planck Institute for Intellectual Property and Competition Law in Munich, 2011, p. 49.
21
Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark. The first draft was
presented in 1964.
22
Levin, 2011, p. 381.
23
Tsoutsanis, 2010, p. 110. Note that a CTM can only enjoy protection through registration.
18
11
The TMD aims at harmonising the provisions of national trademark law that are most likely to
affect the internal market. Recital 4 of the TMD: “It does not appear to be necessary to
undertake full-scale approximation of the trade mark laws of the Member States. It will be
sufficient if approximation is limited to those national provisions of law which most directly
affect the functioning of the internal market.”
However, according to some scholars, in practice, this recital has not been interpreted in a very
strict manner by the CJEU. With help from the TMD, the CJEU has more or less harmonised
almost the complete body of trademark law in the Member States. 24 The case law from the
CJEU is, compared to other fields of intellectual property law, exceptionally rich. This
development has evidently led to a situation where the case law from the CJEU is of crucial
importance for trademark law.25
2.3 The Paris Convention and the TRIPS Agreement
The World Intellectual Property Organization (WIPO)26 administers 26 treaties, and the Paris
Convention is one of them.27 The Paris Convention for the Protection of Industrial Property28
applies to industrial property in its widest sense and includes, among other things, patents and
trademarks. 29 The Paris Convention has established minimum standards, and it builds upon
three categories: national treatment, right of priority and common rules. National treatment
means that each Contracting State must grant the same protection to nationals of other
Contracting States that it grants to its own nationals, and they shall enjoy the same legal remedy
against any infringement of their rights30. The right of priority means that any person who has
duly filed an application for, e.g., a trademark in one of the countries of the Union shall enjoy
24
Dinwoodie, 2013, p. 6.
Kur, 2008, p. 155.
26
WIPO is the global forum for intellectual property services, policy, information and cooperation. It manages
the Madrid system, which is a one stop solution for registering trademarks worldwide. It also manages the
International Patent System (WIPO PCT) and the International Design System (WIPO HAGUE). Further, WIPO
offers alternative dispute resolution in IP and technology disputes, such as arbitration and mediation. See WIPO,
WIPO is the global forum for intellectual property services, policy, information and cooperation.
27
WIPO, WIPO-Administered Treaties.
28
Henceforth: The Paris Convention.
29
WIPO, Summary of the Paris Convention for the Protection of Industrial Property (1883).
30
Article 2(1) of the Paris Convention (1967) and Abdulqawi, 2008, p. 41.
25
12
a right of priority for filing in the other countries for a period of six months31. The Paris
Convention also includes some common rules. For example, one of the common rules is that an
application for registration of a trademark filed by a national of a country in the Union may not
be refused (in any other country of the Union) on the ground that filing, registration or renewal
has not been effected in the country of origin. A registration may not, on the same grounds, be
invalidated.32
Articles 6 and 6bis-6septies of the Paris Convention are the Articles that specifically deal with
matters concerning trademarks. In the Paris Convention, trademarks have rights beyond those
of patents and designs. The rights concerning patents and designs are territorial, meaning that
they are only valid and have only legal effect in the countries in which they have been
registered. This is not the case with trademarks.33 In Article 6bis of the Paris Convention, wellknown marks have special and extended rights. This Article states that a trademark that has not
been registered in a specific country will still enjoy legal effect there if it is considered to be
well known by the competent authority. However, this right is limited to identical or similar
goods.
The WTO’s TRIPS agreement of 1994 brings the different laws and standards surrounding
intellectual property around the world under international rules. The agreement establishes
minimum levels of protection of intellectual property that the WTO signatories must follow.34
The TRIPS agreement builds upon the Paris and Berne Conventions, but with more concrete
and far-reaching principles. The principle of national treatment in the Paris Convention is still
of importance, but has been accompanied with the most-favoured-nation-treatment principle.35
This principle means that, with regard to the protection of intellectual property, any advantage,
favour, privilege or immunity granted by a Member to the nationals of any other country shall
be accorded immediately and unconditionally to the nationals of all other Members.36
Articles 15 and 16 of the TRIPS Agreement are the most interesting when it comes to trademark
infringement. Article 15 concerns what is a protectable subject matter. According to the TRIPS
31
Article 4(a)(1) of the Paris Convention (1967). The periods of priority depends upon what industrial property
the application concerns. For example, for patents and utility models the period of priority shall be 12 months and
for industrial designs the period is six months, stated in Article 4(C)(1).
32
Article 6(2) of the Paris Convention (1967).
33
Levin, 2011, p. 387.
34
WTO, Intellectual Property: protection and enforcement.
35
Bernitz-Karnell-Pehrson-Sandgren, 2013, p. 15 and Article 4 of the TRIPS Agreement (1994).
36
Article 4 of the TRIPS Agreement (1994).
13
Agreement, any sign capable of distinguishing the goods or services of one undertaking from
those of other undertakings shall be capable of constituting a trademark.37 Article 16(1) states
the rights conferred by a trademark. The owner shall have the exclusive right to prevent all third
parties not having the owner’s consent from using in the course of trade identical or similar
signs for goods or services, which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood of confusion. Further, the
specific right given to well-known trademarks in Article 6bis of the Paris Convention has been
extended. In the Paris Convention, the right was limited to similar or identical goods. In the
TRIPS Agreement, it says that Article 6bis of the Paris Convention shall apply, mutatis mutandis,
to goods or services which are not similar, provided that use of that trademark in relation to
those goods or services would indicate a connection between those goods or services and the
owner of the registered trademark.38
To make sure that WTO signatories comply with the rules and principles set out in the TRIPS
Agreement, the WTO has instituted a dispute settlement body. The CJEU has gained the
competence to give preliminary rulings regarding the interpretation of the TRIPS Agreement in
the EU.39
37
Ibid. Article 15(1)
Ibid. Article 16(3).
39
Bernitz-Karnell-Pehrson-Sandgren, 2013, p. 16.
38
14
3 The functions of trademarks and
scope of protection
3.1 The functions of trademarks
The trademark has at least three different functions: the identifying or origin function, the
quality function and the advertising and investment function.40 Among those three, the
identifying or origin function is considered the most “essential”, since it informs the consumer
about the source of the goods bearing the mark.41 This view was first established by the CJEU
in Hoffmann- La Roche v Centrafarm42. It is also emphasised in recital 11 of the TMD, where
it states that the protection afforded by the registered trademark, the function of which is in
particular to guarantee the trademark as an indication of origin, should be absolute in the case
of identity between the mark and the sign and the goods or services.
Second, the trademark is associated with the quality of the product. The trademark
communicates information to the consumer. For example, the consumer can associate the
trademark with certain quality standards that the product fulfils. It has even been argued that
today, the quality function has a greater value than the origin function.43
The third function that the trademark performs is advertising and investment. This function
serves to both persuade and inform consumers. The best way for the producer to reach the
consumer is with advertising and the trademark functions as a bridge between advertising and
purchasing.44
The quality and identifying functions of a trademark are often analyzed together from the law
and economics perspective. To give legal protection to a trademark is an incentive and will
encourage the trademark owner to produce products of a high quality, and also to reduce
consumer costs. If the consumer is pleased with the product, he or she will come back to the
producer and buy more (and also be willing to pay more, if the consumer knows that the quality
40
Pak, 2013, p. 159.
Ibid.
42
See Chapter 2.3 above.
43
Pak, 2013, p. 159f.
44
Ibid. p. 160.
41
15
is consistent), which will help the producer to receive returns to his investments. A satisfied
consumer will also gain from the fact that their search costs will be reduced.45
Even though the origin function might be the most important, the CJEU made clear in its
judgment in the very famous L’Oréal v Bellure case46 that for trademarks with a reputation,
all functions are equally important. This case will be further discussed in chapter 3.2 as well
as in chapter 3.3.
In his opinion in HAG II, AG Jacobs stated that a trademark right must be exclusive. If the
trademark proprietor has to share the mark with a competitor, he or she will lose control over
the goodwill associated with the trademark. It would also be harmful to the consumers, since
there is a possibility that they will be misled if there is no clarity about the origin of the
trademark.47
3.2 Rights conferred by a trademark
Article 5 TMD describes the rights conferred by a trademark. It states that the proprietor shall
have the exclusive right to the trademark, and that he shall be entitled to prevent all third parties,
not having his consent, from using the trademark in the course of trade. The use prohibited is
either use of an identical mark to the same kind of goods or services offered by the rightholder
(meaning, identical with those for which the trademark was registered for), or use of a similar
mark to the same kind of goods or services, that can create a likelihood of confusion on the part
of the public.
For there to be a trademark infringement there are, as stated in Article 5 of the TMD, several
prerequisites to take into consideration.
In Canon v Metro-Goldwyn-Mayer Inc.48, Canon opposed an application by Metro-GoldwynMayer of the wordmark “CANNON”, claiming that it infringed its earlier registered trademark
45
Ibid. p. 160 and Landes-Posner, 1987, p. 269 ff.
L’Oréal SA v Bellure NV, C-487/07, EU:C:2009:378.
47
SA SNL-SUCL NV v HAG GF AG, C-10/89, Opinion of AG Jacobs, para. 19.
48
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., C-39/97, EU:C:1998:442.
46
16
“Canon”.49 The CJEU stated that the assessment on whether there is a likelihood of confusion
implies some interdependence between the relevant factors and in particular between the
similarity between the trademarks and between the goods or services. The CJEU said:
“Accordingly, a lesser degree of similarity between these goods or services may be offset by a
greater degree of similarity between the marks, and vice versa.” It continued: “…the more
distinctive the earlier mark, the greater risk of confusion…marks with a highly distinctive
character, either per se or because of the reputation they possess on the market, enjoy broader
protection than marks with a less distinctive character”.50
For there to be an infringement, there has to be “use” by a third party. In the case of Arsenal
Football Club plc v Matthew Reed51, the CJEU stated that use of a trademark as a “badge of
allegiance” or “badge of loyalty”, was no defense for a trademark infringement. The facts of
the case were as follows. Arsenal is a well-known football club in the English Premier League,
which has for a long time been associated with two emblems; a cannon device and a shield
device. Arsenal is also nicknamed “the Gunners”. Arsenal had, since 1989, the words “Arsenal”
and “Arsenal Gunners” together with the figurative marks (the cannon device and the shield
device) registered as trademarks in the category for outer clothing, sports clothing, footwear
etc. Arsenal uses the trademarks for merchandising; the club designs and supplies its own
products or via approved resellers. The commercial activity with merchandisers has extended
greatly, and is of great value for the football club.52 Mr. Reed sold unofficial football souvenirs
marked with signs referring to Arsenal. The products were marked, in large letters, that they
were unofficial souvenirs. Also, on one of his stalls there was a disclaimer saying that the
products he offered for sale were not official Arsenal merchandise, and that his business had no
relationship with the official manufacturers and distributors. Mr. Reed also sold a small amount
of official merchandise, but these products were distinguished from the unofficial ones and
were also more expensive. 53
49
Ibid. para. 3.
Ibid. paras. 17-18. See also Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV, C-342/97,
EU:C:1999:323, paras. 19-20, 28. The CJEU confirmed the judgment in Canon, and stated also that a mere aural
similarity between trademarks may create a likelihood of confusion and can hence infringe the rights conferred by
the registered trademark.
51
Arsenal Football Club plc v Matthew Reed, C-206/01, EU:C:2002:651.
52
Ibid. paras. 12-14.
53
Ibid. paras. 15-18.
50
17
One of the questions referred to the CJEU for preliminary ruling was whether a party, which
used in the course of trade a sign identical with a registered trademark and had no defense to
infringement by virtue of Article 6 of the TMD, could have a defense to infringement on the
ground that the use complained of does not indicate trade origin (i.e. a connection in the course
of trade between the goods and the trademark proprietor)?54
The CJEU started by saying that the use of a sign identical to the mark is use in the course of
trade, since it takes place in the context of commercial activity with a view to economic
advantage and not as a private matter. The use of the registered trademark hence falls within
Article 5 (1)(a) of the TMD.55 Regarding the functions of the trademark, the CJEU said that the
essential function of a trademark is to guarantee the identity of origin of the marked goods to
the consumer or the end user of the product, without any possibility of confusion to distinguish
the goods from others which have another origin.56 Even though Mr. Reed gave notice to his
customers, there could still be a possibility that consumers who came across the product outside
Mr. Reed’s stall could interpret the sign as designating Arsenal FC as the undertaking of
origin.57 The CJEU concluded that Mr. Reed’s use of the sign could jeopardize the essential
functions of the registered trademark (the guarantee of origin). Hence the trademark proprietor
should be entitled to prevent all such use and rely on Article 5(1)(a) of the TMD.58
In Adam Opel AG v Autec AG59, Adam Opel discovered that Autec (owner of the trademark
“Cartronic”) marketed a toy that was a 1:24 remote-controlled scale model of the Opel Astra
V8 coupé, bearing the Opel logo (registered and owned by Adam Opel for, inter alia, vehicles
and toys). Opel sought an order that prohibited Autec from commercially affixing the Opel
mark to its toys. According to Opel, the use of the Opel mark on scale models vehicles by Autec
constituted an infringement of that trademark, since the mark was being used for products
54
Ibid. para. 27.
Ibid. para. 40.
56
Ibid. para. 48.
57
Ibid. para. 57.
58
Ibid. paras. 60, 62. It should be mentioned that in para. 54, the CJEU said that a trademark proprietor cannot
prevent use by a third party if that use cannot affect his own interests as a proprietor, having regard to its functions
(for example use for purely descriptive purposes and not for commercial sales to consumers). The CJEU here
referred to the Michael Hölterhoff v Ulrich Freiesleben case (C-2/00, EU:C:2002:287). Mr. Hölterhoff was a
dealer of precious stones, and used some registered trademarks in his oral negotiations with a lady running a
jewelry business. The CJEU said that a trademark proprietor were not affected when a third party orally referred
to his marks when offering goods for sale. This was though under the conditions that the third party made clear
that he did not produce the goods and that the trademark was not perceived in trade as indicating origin.
59
Adam Opel AG v Autec AG, C-48/05, EU:C:2007:55.
55
18
identical with those it has been registered for. Autec claimed that the use of the “Cartronic” and
“AUTEC” marks on the toy, the user instructions and on the remote control transmitter would
not mislead the public about the origin of the product.60 The CJEU basically repeated the
judgment in Arsenal, and stated that the trademark proprietor could prevent a third party from
affixing the mark on its products, if that use could affect or was liable to affect the functions of
the trademark, which was for the national court to determine.61
The rights conferred by a trademark (in this case the rights under Article 5(1) (a)), were further
extended in the case of L’Oréal v Bellure et al62. The facts of the case were as follows. L’Oréal
is the owner of several trademarks, such as the fine fragrances Trésor and Miracle. Bellure is a
company that produces imitations of these fragrances. When marketing the imitations, the
retailers are provided with comparison lists which indicate the word mark of the fine fragrance
of which the perfume being marketed is an imitation. L’Oréal brought proceeding against
Bellure et al, claiming trademark infringement.63 Several questions were referred to the CJEU.
One of the questions referred concerned Article 5 of the TMD. The referring court asked
whether Article 5(1)(a) or (b) of Directive 89/10464 must be interpreted as meaning that the
proprietor of a registered trademark is entitled to prevent the use by a third party, in comparative
advertising, of a sign identical with that mark in relation to goods or services which are identical
with those for which that mark was registered, where such use is not capable of jeopardizing
the essential function of the mark, which is to indicate the origin of the goods or services.65 The
CJEU started by saying that comparison lists such as those at issue should be treated like
comparative advertising when they, explicitly or by indication, identify a competitor or goods
or services offered by a competitor. However, the lists could also be considered to be “use” and
fall under Article 5 (1) (a) of the TMD. The CJEU said, and referred to the Arsenal case66, that
the rights conferred to the trademark proprietor in Article 5 (1) (a) shall enable the proprietor
to ensure that the trademark can fulfill its functions. Not only the essential function of the
60
Ibid. paras. 4-10.
Ibid. para. 37.
62
L’Oréal SA v Bellure NV, C-487/07, EU:C:2009:378.
63
Ibid. paras. 14-22.
64
Replaced by today’s TMD.
65
Ibid. paras. 30, 51.
66
Arsenal Football Club plc v Matthew Reed, C-206/01, EU:C:2002:651, para. 51.
61
19
trademark, which indicates origin, but also the other functions such as guaranteeing the quality
of the goods, communication, investment and advertising.67
The protection conferred in Article 5 (1) (a) is thus broader than that provided in Article 5 (1)
(b). Further, the CJEU concluded that the use of the trademark did not fall within the scope of
descriptive use, since they are used for the purpose of advertising. So basically, the CJEU
concluded that a trademark proprietor shall have the right to prevent use by a third party (in
comparative advertising that does not fulfill all conditions) even when the use is not liable to
affect the essential function of the trademark.68 This case will be further discussed in the next
chapter, regarding the special protection for well-known trademarks.
3.3 Special protection for well-known trademarks
In Article 5 (2) of the Trademark Directive (as well as in Article 6bis of the Paris Convention),
a special right is given to well-known marks. Article 5 (2) states that a Member State can extend
the protection to goods or services which are not similar to those for which the trademark was
registered if the trademark at issue has a reputation. The use of such a sign by a third party must
take unfair advantage of, or be detrimental to, the distinctive character and the repute of the
trademark.
It is essential to clarify when a trademark is well known or has a reputation. In General Motors
v Yplon69 (also called the Chevy case), the dispute concerned the trademark Chevy, a Benelux
trademark registered (in 1961) for in particular motor vehicles, owned by General Motors.
Yplon is also the owner of the Benelux trademark Chevy, registered in 1988 for detergents and
various cleaning products. The latter trademark is also registered in several other Member
States.70 In 1995, General Motors started proceedings against Yplon. General Motors claimed
that the use of the trademark Chevy entailed dilution of its own trademark and thus damaged
its advertising function. Yplon, on the other hand, claimed that General Motors had not showed
that their trademark had a “reputation” in the Benelux countries (within the meaning of the
The CJEU’s position regarding this discussion has been endorsed in several other cases. See, for example Google
v Louis Vuitton Melletier et al, C-236/08, C-237/08 and C-238/08, EU:C:2010:159, and Portakabin Ltd v
Primakabin BV, C-558/08, EU:C:2010:416.
68
L’Oréal SA v Bellure NV, C-487/07, EU:C:2009:378 paras. 52-65.
69
General Motors v Yplon, C-375/97, EU:C:1999:408.
70
Ibid. paras. 7-8.
67
20
Benelux law).71 The referring court stopped the proceedings and asked the CJEU to give a
proper construction to the term “repute of the trademark”, and also to determine whether that
condition must be satisfied throughout the Benelux countries or if it is sufficient for it to be
satisfied in a part of the region.72
The interpretation made by the CJEU was quite short. First, the CJEU stated that a specific
percentage cannot be required since that cannot be inferred from either the letter or the spirit of
Article 5 (2) of the Trademark Directive. When the trademark is known by a significant part of
the public concerned by the products or services covered by that trademark, it has a
“reputation”. With the “public”, the CJEU means the people that are concerned with the
trademark (e.g. traders in a specific sector). When determining this, the court must take into
consideration all relevant facts of the case. Some of the most important factors are the market
share held by the trademark, geographical extent and duration of its use, intensity and the size
of the investment made by the trademark proprietor when promoting it. Further, the CJEU stated
that the trademark must not necessarily have a reputation throughout the territory; it is sufficient
if the trademark has a reputation in a substantial part of it. The CJEU also emphasized the need
for the earlier mark to be detrimentally affected without due cause by the use of the trademark.
The stronger the earlier trademark’s distinctive character and reputation, the easier will it be to
accept that the use has been detrimental.73
In 2000, the CJEU handed down its judgment in the case Davidoff v Gofkid.74 Davidoff use its
registered trademark Davidoff when distributing gentlemen’s cosmetics, cognac, ties glasses,
cigars, pipes and pipe tobacco (all with related accessories) etc. Gofkid is the owner of the
registered trademark Durffee, registered after Davidoff. Under the trademark Durffee, Gofkid
distributes ashtrays, cigar and cigarette cases, cigar holders etc. Davidoff brought proceedings
against Gofkid, claiming that there was a likelihood of confusion between the trademarks
(Gofkid used the same script, with the “D” and “ff” presented in the same distinctive manner)
and that Gofkid tried to take advantage of the high prestige mark Davidoff.75
71
Ibid. paras. 9-10.
Ibid. para. 11.
73
Ibid. paras. 24-31.
74
Davidoff v Gofkid, C-292/00, EU:C:2003:9.
75
Ibid. paras. 6-9.
72
21
The referring court asked the CJEU whether Articles 4 (4) and 5 (2) of the Trademark Directive
are to be interpreted as entitling the Member States to provide specific protection for registered
trademarks with a reputation in cases where the later mark or sign, which is identical with or
similar to the registered mark, is intended to be used or is used for goods or services identical
with or similar to those covered by the registered mark.76
The CJEU started by saying that the question would only be examined under Article 5 (2), but
that the response would apply mutatis mutandis to Article 4 (4)77.78 The CJEU made clear that
for marks with a reputation, the protection given in 5 (2) is stronger than that given in 5 (1)
since it entitles the trademark proprietor to prevent use of a sign which is identical or similar to
the mark at issue even for goods or services that is not similar or identical to those at issue. The
protection is given when the use takes unfair advantage of or is detrimental to the distinctive
character or the repute of the mark.79 Article 5 (2) must not be interpreted by its strict wording,
but rather by the objectives of the system; it is not reasonable that a mark with a reputation shall
enjoy less protection where a sign is used for similar goods or services than for non-similar
goods or services. Hence the CJEU concluded that the answer to the question was that the
Articles at issue should be interpreted as entitling the Member States to provide specific
protection for trademarks with a reputation towards use of a similar or identical sign for goods
or services that are identical with or similar to those at issue.80
In L’Oréal v Bellure, the CJEU introduced a broad function theory in EU trademark law.
In para. 49 of the judgment, the CJEU made clear that an attempt from the third party to ride
on the coat-tails of the mark was enough for the action to be considered to be an advantage
taken unfairly of the distinctive character or the repute of that mark. The CJEU had for a long
time focused on the origin function as the “essential” function, but with this judgment the CJEU
made clear that also the other trademark functions should enjoy absolute protection under
Article 5 (1) (a) of the TMD. The quality, communication, investment and advertising functions
are all functions that a trademark with a reputation can fulfill. In protecting these functions, the
76
Ibid. para. 14.
In its proceedings against Gofkid, Davidoff searched for invalidity of the trademark Durffee. Article 4 of the
TMD concerns “Further grounds for refusal or invalidity concerning conflicts with earlier rights”.
78
Davidoff v Gofkid, C-292/00, EU:C:2003:9 para. 17.
79
Ibid. paras. 19-21.
80
Ibid. paras. 23-25, 30.
77
22
law protects the investment made by the proprietor for the creation of the brand image. With
this judgment, the CJEU lowered the threshold under Article 5 (2) of the TMD.81
3.4 Restrictions on the trademark right
The trademark protection must not extend beyond what can be justified by the nature of the
trademark right.82 For example, in the case Adidas v Fitnessworld83, the CJEU stated that if the
public concerned only see the mark as an embellishment, the use by a third party of that mark
cannot constitute an infringement of the proprietor’s rights. However, the situation is different
if the public concerned establishes a link with the registered mark and the third party.84
Therefore, the legislator has formulated restrictions that will enable third parties to use signs
similar to registered trademarks in a manner that is not detrimental to the functions of the
trademark or to the other interests that the TMD and the CTMR are meant to protect.85
Some of these restrictions are already included in Article 5 of the TMD, but Article 6 contains
specific restrictions, relevant to all articles on trademark infringement. The restrictions in
Article 6 of the TMD are also meant to unite the interests of the protection of the trademark
rights and those of the internal market and the free movement of goods and services.86
Article 6 of the TMD states that a trademark proprietor cannot prohibit a third party from using
his own name or address, nor from using the trademark if it indicates the kind, quality, intended
purpose etc. The Article is especially important for third parties that sell spare parts; they must
be able to actually inform their customers about the intended purpose. For this to be possible,
the third parties must have the right to use the sign, provided that such use is in accordance with
honest practices. For example, if your last name is Philips you are entitled to use your name in
a business, but you are not entitled to open an electronics shop under the name Philips
Electronics etc.87
81
Senftleben, 2014, p. 518 f and Senftleben, 2011, p. 384.
Cohen Jehoram – van Nispen – Huydecoper, 2010, p. 347.
83
Adidas v Fitnessworld, C-408/01, EU:C:2003:582.
84
Ibid. para. 41.
85
Cohen Jehoram – van Nispen – Huydecoper, 2010, p. 347.
86
Ibid. See also BMW v Ronald Karel Deenik, C-63/97, EU:C:1999:82 para. 62.
87
Ibid. p. 348.
82
23
The case The Gillette Company v LA- Laboratoires Ltd88 concerned razors marketed in Finland.
Both companies marketed razors. LA-Laboratoires also sold blades under the trademark
“Parason Flexor”. Affixed to the packaging of the blades was a sticker with the words “All
Parason Flexor and Gillette Sensor handles are compatible with this blade”. Gillette brought an
action against LA-Laboratoires, claiming that they had infringed Gillette’s registered
trademarks “Gillette” and “Sensor”.89
According to Article 6(1)(c) of the TMD, a trademark proprietor is not entitled to prevent a
third party from using the mark in trade where it is necessary to indicate the intended purpose
of a product, in particular spare parts and accessories. However, as the CJEU said, that Article
does not lay down any criteria for determining whether a given intended purpose falls within
its scope. According to earlier case law from the CJEU90, it has been stated that use of a
trademark to inform the public that the advertiser is specialized in the sale of products bearing
the mark at issue constitutes use indicating the intended purpose of a product and hence falls
within the scope of Article 6(1)(c) of the TMD. The same applies to advertisers that carry out
repair and maintenance of the products bearing that mark. Further, the CJEU said that use of
the mark at issue as a means to provide the public with the information necessary as to the
intended purpose of the product which it markets falls within the scope of that article unless the
third party can provide the public with that information without using the mark. This was for
the national court to evaluate.91
The CJEU also touched upon the question of what is ‘honest practice’ in trade and commerce.
Use of a trademark will, for example, not be in accordance with honest practice if it takes unfair
advantage of the mark’s repute or distinctive character, if it gives the impression that there is a
commercial link between the trademark proprietor and the third party or if the third party
presents his products as an imitation or replica of the product bearing that mark.92
Article 6(1) of the TMD is important when it comes to cases regarding comparative advertising.
The provisions in Article 4(f) of the Directive on Comparative Advertising93 are basically the
88
The Gillette Company v LA-Laboratoires Ltd, C-228/03, EU:C:2005:177.
Ibid. paras. 13-14, 16.
90
BMW v Ronald Karel Deenik, C-63/97, EU:C:1999:82 paras. 54, 58-63.
91
The Gillette Company v LA-Laboratoires Ltd, C-228/03, EU:C:2005:177, paras. 30-31, 33-35, 37.
92
Ibid. paras. 40, 49.
93
Directive 2006/114/EC of the European Parliament and of the Council of 12 December 2006 concerning
misleading and comparative advertising.
89
24
same as in Article 6(1)(b and c) of the TMD. According to the former Article, use of a trademark
in comparative advertising must not be detrimental to the repute of the mark nor take unfair
advantage of it etc. The comparative advertising will otherwise not fall within the scope of
honest practices in industry and commerce. The judgment in Gillette can hence, to some extent,
be adapted in cases regarding comparative advertising.
However, use of a trademark in comparative advertising is permitted if it does not discredit or
denigrate the trademark, if it compares goods or services meeting the same needs or intended
for the same purpose etc. 94 The L’Oréal v Bellure judgment mentioned in Chapter 3.2 is of
great importance (or, most probably, the most important judgment) when it comes to the
question whether use of a trademark in comparative advertising can constitute trademark
infringement.95
3.5 Rights conferred by a copyright and related
rights
Copyright is the term used when describing the exclusive rights conferred to authors,
composers, publishers, musicians etc. The rightholders are divided into three categories: the
creators, the performers and the entrepreneurs (hence “related rights”).96
Whilst trademark protection is generally dependent on registration, copyright protection is not.
Because of agreements such as the Berne Convention97, literary and artistic works are given a
similar level of protection in large parts of the world. However, copyright protection is still
subject to national law and the harmonization is still only partial, which is apparent not least
when it comes to the enforcement of rights.98
The granting of exclusive rights to authors, performers and entrepreneurs builds on two major
objects. First, the grantor wants to reward the persons who enrich cultural heritage. Secondly,
94
95
Ibid. Article 4(b and d).
Grigoriadis, 2014, p. 163.
96
Keeling, 2003, p. 263.
Berne Convention for the Protection of Literary and Artistic Works of September 9 1886, amended on September
28 1979. Copyright is protected under several other treaties, such as the TRIPS Agreement.
98
Keeling, 2003, pp. 265-266.
97
25
there is the economic interest.: for there to be creative work made available to the general
public, there must be a financial incentive for the creators.99
In the Joined Cases C- 92/92 and C-326/92 Phil Collins, the CJEU gave a definition of the
specific subject matter of a copyright when saying, “The specific subject-matter of copyright
and related rights, as governed by national legislation, is to ensure the protection of the moral
and economic rights of their holders. The protection of moral rights enables authors and
performers, in particular, to object to any distortion, mutilation or other modification of a work
which would be prejudicial to their honour of reputation. Copyright and related rights are also
economic in nature, in that they confer the right to exploit commercially the marketing of the
protected work, particularly in the form of licenses granted in return for payment of
royalties”.100
The CJEU said, in para. 28 of the Magill case, that the essential function of a copyright “…was
to protect the moral rights in the work and ensure a reward for the creative effort”.101
99
Ibid. p. 266.
Phil Collins and Imtrat Handelsgesellschaft mbH v Patricia Im-und Export Verwaltungsgesellschaft mbH and
EMI Electrola GmbH, C-92/92 and C-326/92, ECLI:EU:C:1993:847, para. 20.
101
Radio Telefis Eireann (RTE) and Independent Television Publications Ltd (ITP) v The Commission of the
European Communities, C-241/91 P and C-242/91 P, ECLI:EU:C:1995:98.
100
26
4 Contributory infringement and EU
law
4.1 Contributory liability for trademark infringement
Contributory liability is liability imposed on a party that did not directly commit the trademark
infringement, but who nonetheless is responsible for the injuries caused by the infringement.102
However, this liability is not labelled in a universally accepted manner, leading to the
conclusion that there is no common understanding of what is “indirect”, “secondary”,
“contributory” and “vicarious” infringement. Further, the distinction between primary
infringement and the different forms of secondary liability is unclear; that depends on the
different national laws. 103
The view on contributory liability in the US and in the EU differs. In the US, the term
“secondary liability” is a term that covers many different types of trademark infringement
claims, and can be both participant-based and relationship-based. Participant-based liability
occurs when the contributory infringer induces or contributes to or facilitates the harmful
behaviour of the primary infringer. Relationship-based liability occurs, on the other hand, when
the defendant benefits from the harm caused by the primary infringer and when their
relationship is close enough for the law to treat them as one unit.104 The essence of the term
“secondary liability” in the US is not to hold liable the alleged contributory infringer for using
the plaintiffs trademark, but rather to hold the alleged contributory infringer liable for
infringements made by the third party’s use of the plaintiff’s trademark. For trademark owners
it can therefore be better, strategically, to bring a contributory liability claim instead of suing
the third party infringer. In this way, one single proceeding may be enough to secure relief
against a party who enables several acts of infringement by a number of primary infringers.105
102
Oswald, 2007, p. 38.
Kur, 2014, pp. 529-530.
104
Dinwoodie, 2014, p. 463 and note 1.
105
Ibid. The benefits of suing for contributory liability have been enhanced since the entry of the internet. The
efficiency gains are obviously magnified since the number of infringements that the defendant contributes to are
103
27
In the EU, there is no common definition of what a contributory infringement is. There are
however, as will be discussed in the following subchapter, provisions in, for example, the Ecommerce Directive that deal with this matter106. However, the pertinent provisions apply
horizontally, meaning that they do not distinguish between the different IPRs, which is not the
case in the US.107 Even though there has not been a comparative study on this subject that covers
all of the 28 Member States, it is a safe assumption that they all have some principles regarding
contributory liability, either in general principles or as provisions in civil and tort law.108
The case law from the CJEU concerning contributory trademark infringement is limited, a fact
that is not surprising since contributory infringement is governed by national law and is not
specific for the different intellectual property. This chapter will therefore also discuss some
aspects of copyright and related rights on the subject. Further, a brief commentary will be given
on how contributory infringement is dealt with in Germany, the United Kingdom and France.
4.2 What do the Directives say?
As discussed above, there is no harmonised definition of what is a contributory liability for
intellectual property infringement in the EU. Contributory liability is for the national courts to
determine on a case-by-case basis. What is certain is that each Member State must ensure that
there is effective enforcement and protection of intellectual property.109
There are, however, some guidelines for the national courts regarding contributory liability in
the E-Commerce Directive, the Enforcement Directive and the Infosoc Directive.
way higher. Because of the problems that arise online, an international solution to potential liability for
contributory trademark infringement has been demanded for.
106
In the 1980s, a group of scholars commenced a preparatory work on harmonization and unification of European
Civil Law, but the work concerned mainly contract law. See Kur, 2014, p. 525, note 2.
107
Kur, 2014, p. 527.
Ibid. p. 525 and Leistner, 2014, p. 75.
109
This is not just within the EU. Article 41 of the TRIPS Agreement states as follows: “Members shall ensure
that enforcement procedures as specified in this part are available under their law so as to permit effective action
against any act of infringement of intellectual property rights covered by this Agreement including expeditious
remedies to prevent infringements…”
108
28
4.2.1 The E-Commerce Directive
The E-Commerce Directive110 aims to contribute to the proper functioning of the internal
market by ensuring the free movement of information society services between the Member
States. It approximates certain national provisions on, inter alia, information society services
relating to the internal market, the establishment of service providers, commercial
communications, electronic contracts and the liability of intermediaries111 (emphasis added).112
The E-Commerce Directive deals with the central issues regarding electronic commerce, and
therefore it is also known as “the legal framework Directive”.113
Recital 40 of the E-Commerce Directive states “Both existing and emerging disparities in
Member States’ legislation and case-law concerning liability of service providers acting as
intermediaries prevent the smooth functioning of the internal market, in particular by impairing
the development of cross-border services and producing distortion of competition (…) this
Directive should constitute the appropriate basis for the development of rapid and reliable
procedures for removing and disabling access to illegal information (…)”.
Section 4 of the E-Commerce Directive, Articles 12-15, concerns the liability of intermediary
service providers. Article 12 states, in essence, that a service provider cannot be held liable for
the content of information transmitted if he is passive.
Article 13 deals with “caching”, meaning copies that are stored only temporarily.114 The service
provider is not liable if five conditions are met. For example, he must not alter the information
or else he will no longer be considered an intermediary.
Article 14 concerns storage of information. A service provider is not liable for the information
stored at the request of a recipient under the condition that the service provider does not have
actual knowledge of illegal activity or information. Also, upon obtaining knowledge or
awareness the service provider must expeditiously remove or disable access to the information.
Finally, Article 15, states that Member States shall not impose any obligation on the service
provider to actively seek facts or circumstances indicating illegal activity. Further, Article 15
entitles the Member States to establish obligations for information service providers to inform
the competent public authority of alleged illegal activities.
110
Directive 2000/31/EC of the Parliament and of the Council of 8 June 2000 on certain legal aspects of
information society services, in particular electronic commerce, in the internal market. Henceforth: The ECommerce Directive
111
In this thesis I have chosen to use the term “contributory”. However, in case law from the CJEU and in the
Directives, the term “intermediary” is being used.
112
Article 1 (1 and 2) of the E-Commerce Directive.
113
Lodder, 2002, pp. 67-68.
114
Ibid. p. 87.
29
4.2.2 The Enforcement
The object of the Enforcement Directive115 is to require that all Member States provide for the
measures, procedures and remedies necessary to ensure the enforcement of intellectual property
rights. These measures must be effective, proportionate and dissuasive.116
In recital 23 of the Enforcement Directive it says that “Without prejudice to any other measures,
procedures and remedies available, rightholders should have the possibility of applying for an
injunction against an intermediary whose services are being used by a third party to infringe
the rightholder’s industrial property right. The conditions and procedures relating to such
injunctions should be left to the national law of the Member States (…)”.
Further, in Article 9 (1), it says that the Member States shall ensure that judicial authorities may
issue an interlocutory injunction against an intermediary whose services are being used by a
third party to infringe an intellectual property right. Finally, Article 11 states that Member States
must ensure that rightholders can apply for an injunction against intermediaries.
4.2.3 The Infosoc Directive
There are today several Directives that harmonise different aspects of copyright and related
rights in the EU.117 One of the most important of these is the Directive on copyright in the
information society (Infosoc).118 Infosoc and the E-Commerce Directive complement each
other, as the E-Commerce Directive harmonises issues relating to the functioning of the internal
market and Infosoc deals with aspects of copyright law. Infosoc also supplements the liability
provisions in the E-Commerce Directive by allowing injunctive relief against intermediaries
when third parties that infringe copyright and other related rights use their services.119
Recital four of Infosoc says that “[a] harmonised legal framework on copyright and related
rights, through increased legal certainty and while providing for a high level of protection of
intellectual property, will foster substantial investment in creativity and innovation, including
115
Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of
intellectual property rights. Henceforth: The Enforcement Directive.
116
Article 3 of the Enforcement Directive.
117
For example, Directive 96/9/EC of the European Parliament and of the Council of 11 March 1996 on the legal
protection of databases and Directive 2001/84/EC of the European Parliament and of the Council of 27 September
2001 on the resale right for the benefit of the author of an original work of art.
118
Directive 2001/29/EC of the European Parlianent and of the Council of 22 May 2001 on the harmonisation of
certain aspects of copyright and related rights in the information society (henceforth: Infosoc).
119
“Commission welcomes adoption of the Directive on copyright in the information society by the Council”,
2001.
30
network infrastructure and lead in turn to growth and increased competitiveness of European
industry…”. Further, in recital six, it says that without harmonisation at a Community level,
there can be substantial differences in the legislative activities of Member States leading to legal
uncertainty. These differences might lead to restrictions on free movement or hinder economies
of scale for new products and services containing copyright and related rights.
The second Article of Infosoc defines the reproduction right. In this Article, it is expressly stated
that Member States shall provide for the exclusive right to authorise or prohibit direct or
indirect (emphasis added), temporary or permanent reproduction by any means and any form,
for authors, performers etc.
Article 5 states the exceptions and limitations. For example, some temporary acts of
reproduction shall be exempted from the exclusive reproduction right in Article 2. However, in
recital 59 there is an “exception from the exception”, which states that in a digital environment,
the services of intermediaries may increasingly be used by third parties for infringing activities.
Therefore, the rightholder should have the possibility of applying for an injunction against an
intermediary who carries a third party’s infringement of a protected work or other subjectmatter in a network, even though the act carried out by the intermediary can be exempted under
Article 5. It is then left to the Member States to decide upon the conditions relating to the
injunctions.
Lastly, in Article 8(3), Sanctions and remedies, the legislator states that Member States shall
ensure that rightholders are in a position to apply for injunctions against intermediaries whose
services are used by a third party to infringe a copyright or related right.
4.3 Contributory infringement on the internet
The CJEU’s judgments in the Google France and Google case and L’Oréal v eBay case are of
great importance. In these judgments, the CJEU stated that ISPs such as Google and eBay could
not be liable for primary trademark infringement. Nevertheless, the CJEU did not say that
search engines or auction sites could not be contributory infringers.120
120
Kur, 2014, pp. 530- 531.
31
4.2.1 The Google France and Google case
In 2010, the CJEU (Grand Chamber) gave its judgment in the joined cases C-236/08 Google
France SARL and Google Inc. v Louis Vuitton Malletier SA, C-237/08 Google France SARL v
Viaticum SA and Luteciel SARL and C-238/08 Google France SARL v Centre national de
recherce en relations humaines (CNRRH) SARL, Pierre-Alexis Thonet, Bruno Raboin and Tiger
SARL.121 The case concerned the use, in an internet referencing service, of keywords
corresponding to trademarks of other persons. The keywords at issue were chosen by clients of
the referencing service provider (Google) and accepted and stored by Google. The clients of
Google either marketed imitations of the products of the trademark proprietors or were
competitors to them. The national court referred three questions to the CJEU and asked, in
essence, whether Google could be prohibited from using trademarked keywords and whether
Google could be held liable for trademark infringement.122
First of all, the CJEU reiterated that a trademark proprietor is entitled to prevent use by a third
party, in relation to the goods or services for which the trademark is registered, if that use is
liable to affect the functions of the trademark.123
Secondly, the CJEU stated that use of an identical sign constitutes “use” according to the
Trademark Directive if that use is in a commercial context which gives the user an economic
advantage. In this case, the selection of keywords paid for by the advertiser has the object of
displaying his advertising link that will lead the consumers to his website where he offers his
goods or services. It is therefore obvious, according to the CJEU, that the advertiser uses the
keywords in a commercial activity and not for a private matter.124
Further, regarding the referencing service provider, it is clear that storing keywords for its
customers which are identical to a registered sign and arranging the display of ads connected
121
Google France SARL and Google Inc. v Louis Vuitton Malletier SA, C-236/08, Google France SARL v Viaticum
SA and Luteciel SARL, C-237/08 and Google France SARL v Centre national de recherce en relations humaines
(CNRRH) SARL, Pierre-Alexis Thonet, Bruno Raboin and Tiger SARL, C-238/08, ECLI:EU:C:2010:159. The
author will henceforth in this subchapter refer to the joined cases as “the case”. This case is referred to as the
Google France and Google case in the other parts of the thesis.
122
Ibid. paras. 32, 37, 41-42.
123
Ibid. para. 49.
124
Ibid. paras. 50-52.
32
with these keywords is a commercial activity. However, even if the service provider operates
in the “course of trade”, that does not have to mean that its behaviour constitutes “use” within
the meaning of Article 5 of the Trademark Directive and Article 9 of the CTM.125
For there to be use, the third party should at least use the sign in its own commercial
communication. In this case, Google allowed its customers to use signs similar or identical to
registered trademarks, without getting itself involved in the factual use. Google solely created
and offered the technical conditions necessary for the use of a sign, and the extent to which
Google has permitted its customers to make use of trademarked/protected signs should be
examined under other rules of law than the Trademark Directive and the CTMR. The CJEU
concluded that Google was not involved in use in the course of trade within the meaning of the
Trademark Directive and the CTMR.126
The second question referred to the CJEU was whether the trademark proprietor was entitled to
prohibit an internet referencing service provider from using a trademark with a reputation,
within the meaning of Article 5(2) of the Trademark Directive and Article 9(1)(c) of the CTMR.
The CJEU responded that even though Google admitted advertisers to use keywords like
“imitation” and “copy” together with the registered trademarks, Google could not be held liable
for use of these trademarks (for the same reasons as above).127
The question of whether Google could fall within the scope of Article 14 of Directive 2000/31
was also referred to the CJEU. For a referencing service provider to enjoy protection under this
Article, he must be regarded as an “information society service provider”. The CJEU stated that
Google fulfilled the requisites for being viewed as an information society service provider.
However, to avoid liability Google had to play a neutral role and the services offered had to be
of a solely “technical, automatic and passive nature”.128
The fact that Google was being paid for the services provided and that Google set the payment
terms and drafted the commercial message etc. was not enough to deprive Google from the
exemptions for liability provided for in Directive 2000/31.129
125
Ibid. paras. 53, 55.
Ibid. paras. 56-58.
127
Ibid. paras. 101, 104- 105.
128
Ibid. paras. 106, 113-114.
129
Ibid. paras. 115-118.
126
33
The CJEU therefore concluded that provided that Google did not play an active role, it could
not be held liable within the meaning of Article 14 of Directive 2000/31. However, this was
under the condition that Google, after having obtained knowledge of the unlawful nature of the
advertiser’s activity, expeditiously removed access or disabled access to the data concerned.
This was for the national court to assess.130
4.2.2 The L’Oréal v eBay case
In July 2011, the CJEU (Grand Chamber) handed down its judgment in the case L’Oréal v
eBay.131 L’Oréal, manufacturer and supplier of perfumes, cosmetics and hair-products, started
proceedings against the online marketplace eBay claiming that eBay (as well as some individual
defendants), inter alia, were liable for sales of items that infringed their trademark rights.132
On eBay, a person can register a seller’s account and then offer goods for sale on displayed
listings. When creating an account with eBay, sellers must accept eBay’s online-market user
agreement in which it says that sale of counterfeit goods or other trademark infringements are
prohibited.133
eBay can, upon request, assist the sellers in order to enhance their offers for sale, to set up online
shops, to promote themselves and increase their sales. eBay can also assist its sellers by
advertising some of the products sold on its marketplace using search engine operators such as
Google.134
Several questions were referred to the CJEU. The referring court asked, inter alia, if the
proprietor of a trademark, within the meaning of the Trademark Directive and the CTMR, could
prevent an online marketplace provider from advertising – on the basis of a keyword which is
identical to his trademark – the marketplace and goods bearing that trademark which are offered
for sale on it. The referring court also wanted to know whether the service provided by the
operator falls within Article 14 (1) of the E-Commerce Directive. Further, the referring court
130
Ibid. paras. 119-120. See also recital 45 of Directive 2000/31.
L’Oréal SA, Lancôme parfumes et beauté & Sie CNC, Laboratoire Garnier & Sie and L’Oréal UK Ltd v eBay
International AG, eBay Europe SARL, eBay UK Ltd, Stephen Potts, Tracy Ratchford, Marie Ormsby, James
Clarke, Joanna Clarke, Glen Fox and Rukhsana Bi, C-324/09, ECLI:EU:C:2011:474.
132
Ibid. paras. 26, 28, 34.
133
Ibid. paras. 28, 30.
134
Ibid. para. 31.
131
34
asked whether Article 11 of the Enforcement Directive requires the Member States to afford
proprietors of intellectual property rights the right to obtain injunctions against the operator of
a website requiring said operator to take measures to prevent future infringements of those
rights. 135
Firstly, the CJEU restated what was said in Google France and Google: keywords are used as
advertising, since the object of them is to trigger the display of the seller’s advertisement.
Therefore, there was no doubt that this was use “in the course of trade”. Further, two other
conditions had to be met to enable the trademark proprietor to prevent the advertising at issue:
(i) the advertisements by eBay had to be in relation to the goods or services identical with those
for which the trademark is registered and (ii) the advertisements at issue had to, or be likely to,
have an adverse effect on the functions of the trademark. 136
The CJEU said that eBay’s use of keywords corresponding to L’Oréal’s trademarks as a means
to promote its own services as a marketplace did not fulfil these conditions. However, insofar
as eBay used the keywords to promote its seller’s offers for sale of goods bearing L’Oréal’s
trademarks, that should be sufficient to fulfil the condition “in relation to goods or services”.
The court said that “[i]n that regard, the words “in relation to goods or services” do not relate
solely to the goods or services of a third party which is using signs corresponding to the
trademarks but may also refer to the goods or services of another person”.137
The CJEU continued and said that for there to be an adverse effect on the functions of the
trademark, the advertising at issue should not enable reasonably well-informed and reasonably
observant internet users, or enable them only with difficulty, to ascertain the origin of the goods
in question. The answer to the question was therefore that a trademark proprietor is entitled to
prevent an online marketplace operator from advertising its sellers’ goods bearing the
proprietors trademark if, as a result, there will be difficulties for a reasonably well informed
consumer to ascertain the origin of the goods.138
135
Ibid. paras. 86, 106, 125.
Ibid. paras. 87-88.
137
Ibid. paras. 89, 91.
138
Ibid. paras. 94, 97.
136
35
Article 12-15 of the E-Commerce Directive aims to restrict the number of situations in which
intermediary providers of information society services can be held liable for infringement
pursuant to the applicable national law. Even though it is for the national court to determine
whether eBay shall be held liable for contributory trademark infringement, the CJEU must still
consider whether an operator of an online marketplace may rely on the exemption from liability
in Article 14 of that Directive.139
First of all, to fall within the scope of Article 14 the provider must be an intermediary provider.
This means, basically, that the provider must have taken a neutral role by a merely technical
and automatic processing of the relevant data. If an operator assists its sellers by optimising the
presentation of the offers for sale, the operator can gain knowledge of, or control over, the data
relating to those offers for sale. This is, according to the CJEU, an example of taking an active
role and the operator should therefore not be exempted from liability under Article 14 of the ECommerce Directive. However, this was for the national court to determine.140
Finally, the CJEU stated that even if an ISP could be exempted from liability, the Member
States had to ensure that the national courts should be able to order an ISP to take measures
against present infringements as well as preventing future infringements of the same kind. This
as a means to ensure the effective protection of intellectual property rights.141
4.2.3 The UPC Telekabel case
In November 2011, the CJEU gave its judgment in the SABAM case.142 Scarlet Extended, an
ISP which provided its customers access to the internet (without offering other services such as
downloading or file sharing), was according to SABAM best placed to take measures to bring
to an end copyright infringements committed by its customers.143 The CJEU’s ruling was not,
however, in SABAM’s favour. According to the CJEU, a court injunction against an ISP to
install global and preventive filtering systems with a view to prevent copyright infringements
139
Ibid. paras. 107-108.
Ibid. paras. 112-113, 116.
141
Ibid. paras. 131, 144.
142
Scarlet Extended SA v Société belge des auteurs, compositeurs et éditeurs SCRL (SABAM), C-70/10,
EU:C:2011:771.
143
Ibid. paras. 16, 18.
140
36
should be precluded. Such an injunction would result in a serious infringement in the ISP’s right
to conduct business, as well as potentially undermining the freedom of information.144
In the recent UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH and Wega
Filmproduktionsgesellschaft mbH case145, the CJEU ruled in line with its judgment in the
SABAM case. Two film production companies, Constantin and Wega, claimed for an order
against UPC Telekabel to block the access of its customers to cinematographic works over
which they hold a right related to copyright.146
One of the questions referred to the CJEU was whether an ISP such as USP Telekabel should
be regarded as an intermediary within the meaning of Article 8(3) of Infosoc, since it allows
persons to make protected subject-matter available to the public without the rightholder’s
consent while using the services offered by the ISP.147 The services of intermediaries are often
used to infringe copyright and related rights, hence the possibility in Article 8(3) of Infosoc for
the rightholders to apply for an injunction against an intermediary. Recital 59 of Infosoc states
that the term “intermediary” covers any person who carries a third party’s infringement of a
protected work or other subject-matter in a network. Not regarding an ISP such as USP
Telekabel as an intermediary would, according to the CJEU, be wrong since it is the ISP that
makes the transmission possible and is therefore an inevitable actor in the process. The
objective of Infosoc is to give rightholders a high level of protection. If ISPs should be exempted
from the scope of Article 8(3) of Infosoc, this would diminish the protection of the rightholders
and therefore go against the objectives of Infosoc.148
The CJEU continued by saying that there is no need for a special relationship, such as a
contractual link, between the ISP and the infringing third party. First of all, there is no provision
in Article 8(3) of Infosoc that indicates that there has to be a link between them. Secondly, if
such link should be required it would go against the overall objective of Infosoc since a
requirement such as this would diminish the legal protection of the rightholders.149
144
Ibid. paras. 48, 52, 55.
UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH and Wega Filmproduktionsgesellschaft mbH,
C-314/12, EU:C:2014:192.
146
Ibid. para. 11.
147
Ibid. para. 23.
148
Ibid. paras. 27, 30, 32, 33.
149
Ibid. paras. 34-35.
145
37
The CJEU also discussed the relationship between the fundamental rights of EU law and the
interpretation of the provisions of Infosoc. When implementing Infosoc in the Member States,
there must be a balance between the two and the national court must also respect other principles
of EU law, such as the principle of proportionality. In the present case, the national court must
take into consideration (i) that intellectual property is protected under Article 17(2) of the
Charter150 (ii) the freedom to conduct business, which an ISP does, under Article 16 of the
Charter151 and (iii) the freedom of internet users, protected under Article 11 of the Charter152.
Even though all three of these are to some extent restricted, an injunction does not infringe the
very substance of the freedom of an ISP to conduct a business. The CJEU concluded by saying
that an injunction such as that at issue in the main proceedings which leaves it to the addressee
to determine the specific measures which should be used to stop the infringing activities (the
intentions of Infosoc), shall not be prohibited. The national court must not, with respect to the
fundamental principles of EU law, require unbearable sacrifices on the addressee (especially
since it is not the addressee who is the author of the infringement of the fundamental rights of
intellectual property which has led to the injunction). If the addressee can show that he has
taken all reasonable measures to stop the infringing activity, he can avoid liability. 153
4.4 Real life contributory infringement
4.4.1 The UDV North America case
The UDV North America case differs from the case law earlier cited in Chapter 4. This case is
about “use” of a trademark by a trade intermediary, so it is not a case concerning contributory
trademark infringement as such. However, the CJEU cited this case several times in the Google
France and Google case, in the L’Oréal v eBay case and, of course, in the Red Bull case.
Therefore, the author is of the opinion that this case is interesting and deserves to be mentioned.
Charter of Fundamental Rights of the European Union. Article 17: “Right to property”.
Article 16: Freedom to conduct a business.
152
Article 11: Freedom of expression and information.
153
UPC Telekabel Wien GmbH v Constantin Film Verleih GmbH and Wega Filmproduktionsgesellschaft mbH,
C-314/12, EU:C:2014:192, paras. 50-53, 59, 64.
150
151
38
The dispute in the case between UDV North America Inc. and Brandtraders NV 154 concerned,
among other things, use of a trademark and the rights conferred by a trademark.155 UDV North
America is the proprietor of the CTM “Smirnoff Ice”. Brandtraders operates a website where
member companies can anonymously place advertisements, negotiate transactions and reach
agreements in accordance with the general terms and conditions of the website. When
Brandtraders receives information about an agreement, it starts to act as the vendor’s broker.
Brandtraders concludes with the purchaser a contract of sale for commission in its own name,
but on behalf of its vendor.156
The relation that Brandtraders had to its vendors laid the ground to one of the questions referred
to the CJEU: can a trade intermediary who acts in his own name, but not on his own behalf, be
regarded as a third party who uses the sign within the meaning of Article 9(1)(a) and 2(d) of
the CTMR?157
The CJEU said that for there to be “use” of a trademark, it must be in the course of economic
activity with the view of an economic advantage and not just as a private matter. It was clear
that Brandtraders fulfilled this requisite, and it is therefore irrelevant that Brandtraders only
acted on behalf of the vendor. There was no affixing of the sign at issue on the goods of the
third party, but it was still clear that the use was in relation to goods within the meaning of
Article 9(1)(a) of the CTMR. The use of the sign on business papers established a link between
the sign and the goods provided by the third party, and it was therefore once again irrelevant
that Brandtraders did not have title to the goods. The use could be interpreted by the public
targeted as the third party being the undertaking from which the goods originated and could
hence create the impression that there was a material link in trade between the goods at issue
and the factual undertaking from which the goods originate.158
So, the CJEU came to the conclusion that the concept of “use” in Articles 9(1)(a) and 2(d) of
the CTMR covers a situation where a trade intermediary that acts on behalf of a vendor (without
154
Henceforth: Brandtraders
UDV North America Inc. v Brandtraders NV, C-62/08, ECLI:EU:C:2009:111.
156
Ibid. paras. 5-8.
157
Ibid. para. 27 (2). The trademark appeared on business papers between Brandtraders and the vendor.
158
Ibid. paras. 44-49.
155
39
having title to the goods at issue) uses a sign which is identical to a registered CTM on its
business papers.159
4.3.2 The Red Bull case
In December 2011, the CJEU (first chamber) handed down its judgment in the dispute
between Frisdranken Industrie Winters BV and Red Bull GmbH160.161 Red Bull is the owner
of the world famous trademark RED BULL, which has numerous international registrations.
The registrations are, inter alia, valid in the Benelux countries. Winters is an undertaking that
is involved in the filling of cans with drinks, produced by itself or by others. Smart Drinks
Ltd162 is one of Winters’ customers, as well as a competitor of Red Bull.163
Winters filled cans with fizzy drinks on the instructions of Smart Drinks. Smart Drinks supplied
Winters with empty cans together with matching lids, all bearing various signs, decorations and
text. The cans bore, inter alia, the sign “BULLFIGHTER” (see picture).
After filling the cans, Winters placed them at the disposal of Smart Drinks. Smart Drinks then
exported the filled cans to countries outside the Benelux. Winters was thus only engaged in the
filling procedure.164
Red Bull started proceedings against Winters, seeking an order that Winters should cease using
the sign which Red Bull considered to be similar to its own trademarks. By filling the cans,
Winters were infringing Red Bull’s trademark rights. The CJEU was asked whether the mere
159
Ibid. para. 54.
Henceforth: Winters, Red Bull.
161
Frisdranken Industries Winters BV v Red Bull GmbH, C-119/10, ECLI:EU:C:2011:837.
162
Henceforth: Smart Drinks
163
Frisdranken Industries Winters BV v Red Bull GmbH, C-119/10, ECLI:EU:C:2011:837 paras. 4-6.
164
Ibid. paras. 7-8.
160
40
“filling” of packaging which bears a sign is to be regarded as using that sign in the course of
trade within the meaning of Article 5 of the Trademark Directive, even if that filling takes place
as a service provided to and on the instructions of another person, for the purposes of
distinguishing that person’s goods?165
The judgment from the CJEU was highly influenced by the judgments from the Google France
and Google case and the L’Oréal v eBay case. The CJEU stated that even though Winters, the
service provider, is engaged in a commercial activity when filling the cans, that does not have
to mean that the service provider itself actually “uses” the signs within the meaning of Article
5 of the Trademark Directive. The CJEU here referred to the judgment in the Google France
and Google case, where it was stated that: “…the fact of creating the technical conditions
necessary for the use of a sign and being paid for that service does not mean that the party
offering the service itself uses that sign”. A service provider in Winters’ position does not “use”
the sign “for goods or services” which are identical to, or similar with, those for which the sign
was registered for, even though that expression generally applies to third parties. However, as
was stated in, inter alia, UDV North America, third parties can still be liable for trademark
infringement if a link can be established between the service provider and the trademark
proprietor. However, the filling of cans bearing signs similar to the registered trademark is not
a service aimed at marketing and promoting the goods at issue, meaning that a link cannot be
established in this case.166
Even though the CJEU found that Winters did not “use” the sign as described in Article 5 (1)(b)
of the Trademark Directive, they did not preclude the possibility of secondary liability. In para.
35 of the judgment the CJEU said: “Inasmuch as such a service provider enables its customers
to make use of signs similar to trade marks, its role cannot be assessed under Directive 89/104
but must be examined, if necessary, from the point of view of other rules of law. So, the CJEU
made clear that a service provider like Winters is not a primary infringer, but can still be a
contributory infringer under other rules of law.
165
166
Ibid. paras. 9, 14(1)(a).
Ibid. paras. 28-33.
41
4.3.3 Opinion of AG Kokott in Red Bull
This judgment was in line with the opinion of AG Kokott.167 Kokott was of the opinion that
Winters did not commit any trademark infringement, since Winters did not use the sign in its
own commercial communication (compared to the UDV North America case, developed
above). The service provided by Winters was solely to fill the cans, and was therefore totally
independent of the signs and marks of Red Bull.168
In cases where the third party has been held liable for “use”, the service provided has been
targeted towards a specific brand of goods or used in comparative advertising to distinguish
brands from each other. In situations like these, the sign has been used for commercial
communication. If, as a consequence of the foregoing, the consumer establishes a link between
the third party and the sign, that is according to case law from the CJEU “use” of a mark. A
filling plant can therefore not be linked to the mark, since it appears only vis-à-vis the
customers.169
AG Kokott thought that this case gave an opportunity to discuss whether there should be a
specific exception for trademark infringements for filling plants. Kokott said that for service
providers such as Winters, it is practically impossible to ensure that signs chosen by a customer
do not infringe rights conferred to other trademarks. Firstly, there is a large number of
trademarks on the market without a reputation. For a service provider like Winters it would be
impossible to investigate whether there is a possibility of infringement for every single job.
Secondly, it would be even harder for the service provider to determine whether there are signs
that are sufficiently similar (like in the present case). This would expose service providers to
disproportionate risks.170
167
Frisdranken Industrie Winters BV v Red Bull GmbH, C-119/10, Opinion of AG Kokott. See para. 37 of the
judgment and para. 62(1) of the opinion.
168
Ibid. paras. 25-26.
169
Ibid. paras. 26, 28.
170
Ibid. paras. 30, 33-34.
42
4.5 Contributory
infringement
in
Germany,
the
United Kingdom and France
Contributory trademark infringement in France is regulated in the Code Civil and in the UK,
liability can be imposed on a contributory infringer either under the general rules of tort law or
under the limited statutory protection for so-called “secondary infringement”. In Germany, the
doctrine of Störerhaftung (“interferer liability”) makes available special remedies against
contributory infringers that operate on the internet.171
4.4.1 Germany
The German case law on contributory infringements of IPRs depends on the specific kind of
IPR. Contributory infringement in trademark and in copyright and related rights are dealt with
under the doctrine of Störerhaftung, while cases regarding patents are dealt with under tort law.
Contributory patent infringement is, according to German case law, an independent tortious
infringement and does not fall within the scope of Störerhaftung.172
The doctrine of Störerhaftung means that “…any person who has wilfully made a causal
contribution to the direct infringement of an IPR by third parties can be held liable for
injunctive relief if the contributor has violated a reasonable duty of care to prevent such
directive infringements”.173 An action for an injunctive relief against a contributory infringer,
based on Störerhaftung, thus has three requisites: a wilful, adequate causal contribution to the
infringing acts of any third party; the legal and factual possibility of preventing and resulting
direct infringements and the violation of a reasonable duty of care to prevent these
infringements. Case law from the German Federal Court of Justice says that what is
“reasonable” depends on the specific facts of each and every case, for example the role and
function of the interferer (the “Störer”) and the intensity of the danger of the direct infringement.
In an internet context, this basically means that an ISP shall not be required to control every
piece of content that its users want to make available on its platform. If the ISP receives
information from a rightholder about an infringement it has to remove the infringing content
and take measures against future, similar infringements. However, these measures must not be
171
Bentley-Sherman, 2014, p. 1058.
Leistner, 2014, p. 78.
173
Ibid.
172
43
too far reaching; the ISP is not obliged to prevent all future infringements at any cost; the
measures must be reasonable and economically feasible.174
An action against a contributory infringer, based on Störerhaftung, gives the rightholder the
right to an injunction but not to damages. This means that that the legal consequences from
cases regarding contributory infringement in trademark and copyright and related rights cases
differ from contributory infringement of patent cases.175
4.4.2 The United Kingdom
Trademark infringement in the UK is regulated in section 10 of the Trade Marks Act 1994.
Section 10(5) says: “A person who applies a registered trade mark to material intended to be
used for labelling or packaging goods, as a business paper, or for advertising goods or services,
shall be treated as a party to any use of the material which infringes the registered trade mark
if when he applied the mark he knew or had reason to believe that the application of the mark
was not duly authorised by the proprietor or a licensee.”. Contributory trademark infringement
in the UK differs from primary trademark infringement, since the requisite “…knew or had
reason to believe…” in section 10(5) is irrelevant in primary infringement cases.176
Aside from the Regulations in the Trade Mark Act 1994, contributory infringement (accessory
liability) is also dealt with under the law relating to joint tortfeasance. Contrary to German
legislation, all kinds of IPR fall within the scope of this law, since it is based on the general
principles of tort law.
4.4.3 France
In France, there is a specific statutory provision for contributory patent infringement but not for
trademark infringement. Contributory trademark infringement is governed by general
principles of tort law. According to Article 1382 of the Code Civil, there are three requisites for
there to be tortious liability; damage to the claimant, caused by an act of the defendant and
intent/negligence (in French: faute). The concept of contributory infringement, which applies
to all kinds of IPRs, is hence quite broad in France. It is basically enough that the defendant
174
Ibid. p. 79.
Ibid. p. 82.
176
Bently-Sherman, 2014, p. 1058.
175
44
negligently failed to prevent direct acts of infringement for there to be liability. Remedies are
not limited to injunctions. Since negligence, faute, is considered to be tort, the same remedies
shall apply to contributory infringers as well as primary infringers. A contributory infringer can
therefore be subject to damage claims.177
177
Leistner, 2014, p. 86.
45
5 Analysis
5.1 The
distinction
between
primary
and
contributory trademark infringement
The case law from the CJEU on primary trademark infringement is substantial, and it is clear
that the protection of trademarks has extended over the years. In 2014, Apple was #1 on the list
of the world’s most valuable brands, with a brand worth $124,2 billion.178 It is no wonder that
companies put substantial resources on the enforcement of their rights, and why the case law is
so substantial.
For there to be a primary infringement, there has to be “use” of the trademark in a commercial
activity that can harm the essential functions of the trademark. These are the requisites that
make the discussion on contributory infringement interesting. Without “use” there cannot be a
primary infringement under the provisions of the TMD, but there can still be a contributory
infringement. Let us go through some of the arguments from the cases cited above again.
The keyword advertising offered by Google was definitely a commercial activity, but since
Google did not use the trademarks in its own communication (emphasis added) there was,
according to the CJEU, no “use” of the trademarks. Providing the third party with the technical
conditions necessary was not the same thing as “use” of the trademark by Google.
When eBay used keywords that corresponded to L’Oréal’s trademarks, as a means to promote
its own services as a marketplace, that was indeed use in relation to the goods for which the
trademark was registered. However, the CJEU was of the opinion that that use did not have an
adverse effect on the functions of the trademarks, so there was no primary infringement.
According to the E-commerce Directive, an ISP must be neutral and passive to avoid liability.
The CJEU here said that assisting its customers in setting up shops is not neutral and passive,
since the ISP then can gain knowledge of and control over the information.
Red Bull’s trademark is also on the “Top 100 list”, with a brand worth $7,5 billion. See Apple, Google and
Microsoft are world’s most valuable brands and The World’s most valuable brands.
178
46
The CJEU stated that Brandtraders did use the registered trademark “Smirnoff Ice”, even
though it acted on behalf of its customers. Since Brandtraders used the trademark in its business
papers, there was a possibility that a third party could establish a link between Brandtraders and
the trademark proprietor, leading to a possible adverse effect on the trademark’s functions.
And then, in Red Bull, Winters did not use the trademark since all it did was fill cans and put
them at the disposal of the customer. They did not affix the sign to the cans, and they did not
distribute them further. Third parties could hence not establish a link between Winters and the
trademark proprietor, so the service provided by Winters could not harm the origin function.
For an ISP to avoid liability, the conditions in the E-commerce Directive must be met. The ISP
must be passive and have a neutral role, only provide the technical conditions and not control
the material processed at the internet platform. If these provisions could, analogously, apply to
the facts in the Red Bull case, would Winters be able to avoid contributory liability?
What Winters did was fill cans, on which the infringing sign was already affixed. They did not
distribute them further. The service provided by Winters was hence of a technical character.
However, an interesting question is whether Winters’ role is of a passive and neutral nature. To
be able to fill the cans, the cans must be put in some kind of machine. It is likely that the staff
saw the cans when performing this task, or during the actual filling process. Let us say that the
staff at the production site saw that the “BULLFIGHTER” can was not identical, but similar,
to the original “Red Bull” can, but continued to provide the service (which itself is technical).
The “Red Bull” trademark is a mark with a reputation. Winters still does not use the trademark,
but the staff are most likely aware of a potential trademark infringement. This can be compared
to the ISP situation: once the ISP becomes aware of the infringing activity, it must take all
reasonable measures to put the infringement to an end to avoid liability. In this situation, the
staff should stop the filling process. If not, they are acting negligently and Winters’ role as a
service provider is no longer passive and neutral. It can also be discussed whether Winters’ role
is passive and neutral at all, since it does control the information (in this case, the cans).
The CJEU has stated, quite clearly, that from the moment an ISP becomes aware of any
infringing activity on its internet platform, measures must be taken to put an end to the
infringement and, to some extent, prevent further similar infringements. If that should apply to
a real life service provider as well, it would probably be easier to impose liability on a real life
47
service provider than on an ISP. A real life service provider controls the production, and is
naturally aware of the material entering its production site. However, it cannot be required from
a service provider to actively search for potential trademark infringements on all material that
enters the production site but it will probably be difficult to avoid liability if the trademark
infringed is well-known with a reputation.
It is difficult to give an answer to the question on the distinction between primary and
contributory infringement since contributory infringement it is still a national matter. One could
say that the view taken by the EU and the CJEU is that when a third party uses an identical or
similar mark in a commercial activity, which could harm the essential functions of a trademark,
it is infringing the rights conferred by that mark and is consequently a primary infringer (Article
5 TMD). A service provider that does not itself use the trademark, but who induces another to
infringe a trademark shall be contributory responsible for that trademark infringement if it knew
that its customer were engaging in trademark infringement. The services provided must be
technical, and the role of the service provider must be passive and neutral to avoid liability. So
basically, what the CJEU says is that the distinction between primary and contributory
infringement lies in whether there is “use” or whether there is an “active role”.
However, the minimum requirement we have from harmonised EU trademark law for there to
be a primary infringement is that there has to be “use” of the trademark. After that, it is up to
the Member States to decide whether it is a primary or a contributory trademark infringement.
Recital 4 of the TMD states that a full-scale harmonisation of the national laws is unnecessary,
and that only those provisions that affect the internal market should be harmonised. The author
finds it hard to believe that only primary infringement, and not contributory infringement, might
affect the internal market in a negative way.
It can be discussed whether the view taken by the EU and CJEU makes it too easy for an ISP,
and in the long run probably for a real life service provider as well, to circumvent liability. It
all depends on the interpretation made by the Member States, but in Google France and Google
the author is of the opinion that it is not reasonable that an ISP can “hide” from liability to such
a great extent.
Fiona McBride, partner and head of the Trademark group at the law firm Withers & Rogers
LLP, said about the Google France and Google judgment that "This is a setback for brand
owners and seriously limits the scope of their trade mark rights when it comes to challenging
48
use of their trade marks in online advertising". McBride continued saying that "Only rarely
will the internet user be unable to ascertain the origin of the goods and services and it will
therefore be easy for advertisers to circumvent the law and use third party trade marks as
keywords. This means that advertisers can secure a commercial advantage by piggy-backing
on the reputation of the trademarks."179
Dr. Obhi, senior litigation counsel at Google was of course of another opinion and wrote in the
official Google blog “We believe that user interest is best served by maximizing the choice of
keywords, ensuring relevant and informative advertising for a wide variety of different contexts.
For instance, if a user is searching for information about a particular car, he or she will want
more than just that car’s website. They might be looking for different dealers that sell that car,
second hand cars, reviews about the car or looking for information about other cars in the same
category.” Dr. Obhi continued, “Some companies want to limit choice for users by extending
trade mark law to encompass the use of keywords in online advertising. Ultimately they want
to be able to exercise greater control over the information available to users by preventing
other companies from advertising when a user enters their trade mark as a search query. In
other words, controlling and restricting the amount of information that users may see in
response to their searches.”180
To some extent, the author is willing to agree with Dr. Obhi. If the outcome of the Google
France and Google case would have been different, there would be a possibility that users or
consumers could have been harmed. But as McBride said, "Only rarely will the internet user
be unable to ascertain the origin of the goods and services…”181, so the origin function of the
trademark is not very likely to suffer from substantial harm. However, has the CJEU forgotten
the judgment in L’Oréal v Bellure? Today, the origin function is no longer alone on the top of
the hierarchy of the trademark functions. In fact, at least in the author’s opinion, there is
basically no hierarchy left. The other functions are extremely important as well, and especially
since Louis Vuitton is a trademark with a reputation, it would not be right to focus on the origin
function solely.
179
See Google wins Louis Vuitton trademark case.
See European Court of Justice rules in Google’s favor.
181
See Google wins Louis Vuitton trademark case.
180
49
5.2 Towards harmonisation?
The harmonisation of the laws of the Member States of the EU has been in process since the
entry of the Treaty of Rome in 1957. While many areas of law have been harmonised, tort law
is still seen as an area of law which should be up to the Member States themselves to regulate.
The fact that we in Europe have both common and civil law systems is perhaps one of the
reasons why a harmonisation of tort law is too complicated and far-reaching. Today, when the
EU is facing many challenges, the discussion on the Member States’ sovereignty is of great
importance. On the other hand, since we want a strong internal market and free movement of
goods and services, legal certainty is of great importance. If the differences in the Member
States’ tort law are substantial, that will create an insecure market for the companies.
However, in the brief presentation about how contributory infringement is dealt with in
Germany, the UK and France, I did not see any substantial differences (even though their
systems varied). It seemed like all three of them saw an act of contributory infringement as a
serious matter.
In the Infosoc Directive, the legislator states that a harmonised legal framework on copyright
and related rights will increase legal certainty and the protection of the intellectual property,
which will lead to a substantial investment in creativity and innovation. 182 The legislator also
states, in Article 2, that the rightholder shall have the exclusive right to prohibit direct or indirect
reproduction. Further, in Article 8(3), the legislator states that the Member State shall provide
for that the rightholder has the ability to apply for injunctions against intermediaries whose
services are used by a third party to infringe a copyright and related right. These Articles show
that in the field of copyright and related rights law, the legislator has taken the problems with
intermediaries seriously. In the TMD, intermediaries are not even mentioned.
Even though I am not of the opinion that the national tort law in general should be harmonised,
I think that there should be a provision in the TMD defining what a contributory infringement
actually is, and what remedies that should be available. After having read the case law, the
author is of the opinion that the intentions with, and the provisions in the E-commerce Directive
should be interpreted analogously to real life contributory infringement cases. However, even
if that might be the case, a specific provision in the TMD that defines a contributory
182
Recital 4 of the Infosoc Directive.
50
infringement (and the remedies available) would surely be appreciated, not least for the sake of
legal certainty. A real life contributory infringer can be just as harmful to the trademark
proprietor as an ISP can, and contributory infringement is also a threat to the strong protection
of intellectual property rights.
To give a proper definition of what is a contributory infringement, of intellectual property, is
of course not easy. Such a definition must comply with the general principles of EU law and it
must be balanced with the objectives of the EU. The author is of the opinion that it is more
difficult to define a contributory infringement than a primary infringement. A primary
infringement is obvious in the sense that it is, for example, a threat against a well-functioning
internal market and an abuse of the right to property. Contributory infringement, on the other
hand, is vague and not so obvious. The right to property and the freedom to conduct business,
which one should prevail? The author is convinced that contributory infringement is also a
threat against a well-functioning internal market, but it is difficult to say to what extent.
However, if there should be a common definition of contributory infringement, negligence
would probably be an important element. If the distinction between primary and contributory
infringement lies in “use” or “active role”, negligence would probably be an important element
in a potential common definition. If a service provider does not fall within the scope of Article
5, it may be held liable for contributory infringement if it acts negligently. For example, the
CJEU has stated that (according to the E-commerce Directive) the service provider’s role must
be neutral and passive. If it acts negligently, it will automatically become active since a party
that acts negligently is not neutral and/or passive. There is also a possibility that the legislator
chooses to only impose contributory liability when the infringement concerns (in this case)
trademarks with a reputation, since it is not reasonable to require from a service provider that it
must search for potential infringement. A requirement like that would probably not be in
balance with the fundamental principles of EU law.
Matthias Leistner concludes, very articulately: “Thus, a European system of common principles
could ideally establish certain structural elements for the assessment of secondary
liability in IP cases: elements of such principles could comprise the listing of certain relevant
assessment factors, such as, inter alia, the role and function of the alleged secondary infringer
(active or neutral), the degree of control as to the allegedly infringing content and the relevance
of the right holder’s specific need for an action against the secondary infringer in certain
categories of cases (according to the principle of cheapest cost-avoider). Moreover, it seems
51
that non-compliance with a reasonable (or proportionate) duty of care to prevent direct
infringements, represents a common central element of civil law secondary liability for direct
IP infringements throughout the Member States. If the element of a reasonable duty of care can
indeed be identified as a common denominator in the laws of most European Member States,
this element should certainly be specified in prospective common principles of secondary
liability by providing relevant and more specific assessment factors for the flexible adjustment
of the standard of reasonableness (or proportionality) for certain categories of cases.”.183
183
Leistner, 2014, pp. 89-90.
52
6 Conclusion
When the CJEU gave its judgments in Google France and Google and L’Oréal v eBay, it stated
that an ISP such as those at issue cannot be a primary infringer. An ISP does not, or should not,
control or have knowledge of the information stored and transferred on and via its internet
platform. Nor does the ISP “use” the trademark in a way that corresponds to the requisites set
out in Article 5 of the TMD.
Even though there was no “use”, the ISP could still be liable for contributory infringement.
From what can be read in the judgments and in the E-commerce Directive, it is stated that as
long as an ISP only provided the third party with the technical conditions and had a role that
was passive and neutral it could not be liable for contributory infringement.
Does this means that as soon as the ISP plays an active role, it will be liable for contributory
infringement? The distinction between “use” and “active role” is an evaluation that is left to the
Member States to make, but that is likely how the CJEU distinguishes between “use” and
contributory infringement.
If the judgments in the Internet related cases shall apply analogously to real life contributory
infringement cases that would probably mean that it will be easier to impose liability on a real
life contributor than on an ISP. A real life service provider is by its very nature active, since it
has knowledge of the material that enters the production site. However, as AG Kokott stated in
her opinion in Red Bull, a service provider such as that at issue in Red Bull must not be forced
to search for potential trademark infringements in each single case. It is however the authors
opinion that it will be difficult for a real life service provider to prove its passive nature and
unawareness of the material (which should correspond to the information in the E-commerce
Directive).
Since there is no common definition of contributory infringement in EU law, the outcome of
the cases will differ since the different Member States have different views on the liability that
should be imposed on the contributory infringer. Even though a harmonization of tort law is not
necessary, a common definition of what is a contributory infringement of an intellectual
property right would be appreciated. To be able to secure a strong protection of intellectual
53
property, a common definition would be an important element. Contributory infringement, and
not just primary infringement, is a threat against the functions of the trademark and the rights
conferred to it and in the long run, a threat to the intentions with the internal market.
54
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Table of Cases
Adam Opel AG v Autec AG, C-48/05, EU:C:2007:55
Adidas v Fitnessworld, C-408/01, EU:C:2003:582
Arsenal Football Club plc v Matthew Reed, C-206/01, EU:C:2002:651
BMW v Ronald Karel Deenik, C-63/97, EU:C:1999:82
Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc., C-39/97, EU:C:1998:442
Frisdranken Industries Winters BV v Red Bull GmbH, C-119/10, EU:C:2011:837
General Motors v Yplon, C-375/97, EU:C:1999:408
Google France SARL and Google Inc. v Louis Vuitton Malletier SA, C-236/08, Google France
SARL v Viaticum SA and Luteciel SARL, C-237/08 and Google France SARL v Centre national
de recherce en relations humaines (CNRRH) SARL, Pierre-Alexis Thonet, Bruno Raboin and
Tiger SARL, C-238/08, EU:C:2010:159
Hoffmann- La Roche v Centrafarm, C-102/77, EU:C:1978:108
Michael Hölterhoff v Ulrich Freiesleben, C-2/00, EU:C:2002:287
L’Oréal SA v Bellure NV, C-487/07, EU:C:2009:378
L’Oréal SA, Lancôme parfumes et beauté & Sie CNC, Laboratoire Garnier & Sie and L’Oréal
UK Ltd v eBay International AG, eBay Europe SARL, eBay UK Ltd, Stephen Potts, Tracy
Ratchford, Marie Ormsby, James Clarke, Joanna Clarke, Glen Fox and Rukhsana Bi, C324/09, EU:C:2011:474
Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV, C-342/97, EU:C:1999:323
Phil Collins and Imtrat Handelsgesellschaft mbH v Patricia Im-und Export
Verwaltungsgesellschaft mbH and EMI Electrola GmbH, C-92/92 and C-326/92,
EU:C:1993:847
Portakabin Ltd v Primakabin BV, C-558/08, EU:C:2010:416
Radio Telefis Eireann (RTE) and Independent Television Publications Ltd (ITP) v The
Commission of the European Communities, C-241/91 P and C-242/91 P, EU:C:1995:98
SA SNL- SUCAL NV v HAG GF AG, C-10/89, EU:C:1990:359
Scarlet Extended SA v Société belge des auteurs, compositeurs et éditeurs SCRL (SABAM), C70/10, EU:C:2011:771
59
Sirena SRL v Eda SRL, C-40/70, EU:C:1979:236
The Gillette Company v LA-Laboratoires Ltd, C-228/03, EU:C:2005:177
UDV North America Inc. v Brandtraders NV, C-62/08, EU:C:2009:111
UPC Telekabel Wien GmbH v Constantin Film Verleih
Filmproduktionsgesellschaft mbH, C-314/12, EU:C:2014:192
GmbH
and
Sirena SRL v Eda SRL, C-40/70, Opinion of AG Dutheillet de Lamothe
SA SNL-SUCL NV v HAG GF AG, C-10/89, Opinion of AG Jacobs
Frisdranken Industrie Winters BV v Red Bull GmbH, C-119/10, Opinion of AG Kokott
60
Wega