High Court: L'Oréal v eBay - ebay wins again?

Eagerly awaited and just out today is the UK High Court's decision in L'Oréal v eBay [2009] EWHC 1094 (Ch). Update: Please click here to retrieve the decision.

While the Kat has not yet seen the actual decision, early media reports inform the Kat that eBay has again emerged successful from a trade mark infringement action brought against it by cosmetics giant L'Oréal. In similar fashion to the Tribunal de Grande Instance de Paris in the recent French proceedings (see the IPKat's report here), the High Court appears to have considered that eBay has met its legal obligation to combat fake products.

Paris-based L'Oréal, which had brought similar proceedings in several European countries, had argued that online auction site eBay did not do enough to prevent the sale of counterfeit goods such as perfumes and cosmetics. Broadly speaking L'Oréal's position was that eBay should be liable for counterfeit and parallel imported goods sold via its website, and that eBay should do more to prevent the sale of such trade mark infringing goods. After today's decision, there are now three decisions in favour of eBay (UK, France and Belgium), one decision in favour of L'Oréal (Germany) and one decision (from Spain) still outstanding.

According to a report by Kathy Sandler of Dow Jones Newswires, the court appears to have taken the view that the relevant European trade mark law provisions and the eCommerce Directive "were unclear, referring such issues to the European Court of Justice for further guidance".

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Update: the decision, which comprises of 482 paragraphs and certainly deserves an in depth analysis, can now be retrieved by clicking here. Based on what the Kat has been reading so far though, it appears at least open whether eBay has "won" (as initially reported in the media and above) pending a referral to the ECJ. In the meantime, Mr Justice Arnold's conclusions (paragraphs 481, 482) are set out below:

i) The Fourth to Tenth Defendants have infringed the Trade Marks. In the case of the Fourth to Eighth Defendants the goods they sold were put on the market outside the EEA and L'Oréal did not consent to those goods being put on the market within the EEA. In the case of the Ninth and Tenth Defendants, the goods they sold were counterfeits.

ii) Whether the sale by sellers on the Site of testers and dramming products and of unboxed products amounts to an infringement of the Trade Marks depends upon questions of interpretation of the Trade Marks Directive as to which the law is unclear (see paragraphs 319-326 and 331-342 above). Although these questions are academic so far as the acts committed by the Fourth to Tenth Defendants are concerned, they are potentially relevant to the question of what relief, if any, L'Oréal are entitled to. Accordingly, guidance from the ECJ is required on these points.

iii) eBay Europe are not jointly liable for the infringements committed by the Fourth to Tenth Defendants.

iv) Whether eBay Europe have infringed the Link Marks by use in sponsored links and on the Site in relation to infringing goods again depends upon a number of questions of interpretation of the Trade Marks Directive upon which guidance from the ECJ is required (see paragraphs 388-392, 393-398 and 413-418 above).

v) Whether eBay Europe have a defence under Article 14 of the E-Commerce Directive is another matter upon which guidance from the ECJ is needed (see paragraphs 436-443 above).

vi) As a matter of domestic law the court has power to grant an injunction against eBay Europe by virtue of the infringements committed by the Fourth to Tenth Defendants, but the scope of the relief which Article 11 [of the Enforcement Directive] requires national courts to grant in such circumstances is another matter upon which guidance from the ECJ is required (see paragraphs 455-465 above).

I shall hear further argument on the precise formulation of the questions to be referred to the ECJ. The parties should exchange proposed drafts of the questions in advance of that hearing. The parties should also consider the guidance given by Arden LJ in Horvath v Secretary of State for Environment [2007] EWCA Civ 620 at [80]."