Book Review: Internet intermediaries and trade mark rights

As underlined by Prof Graeme B Dinwoodie in his Foreword, while the interplay between internet intermediaries and copyright has received specific attention from scholars, the interplay between internet intermediaries and trade marks has so far received less attention. Internet Intermediaries and Trade Mark Rights by Althaf Marsoof aims to fills this gap in scholarly literature. 

In his Acknowledgments, Marsoof writes: 

One afternoon in March 2010, Professor Lionel Bently, addressing a small group of LLM students at the University of Cambridge, announced the ruling of the Court of Justice of the European Union (CJEU) in Google v Louis Vuitton (...) and posited that it will shape the landscape of intermediary liability in the European Union. I was one of the students to whom this prophetic remark was made. Not surprisingly, the CJEU’s ruling was followed in subsequent cases, including the ruling in L’Oréal v Ebay (...). According to the CJEU, intermediaries, such as Google do not commit trade mark infringements because they make no use of trade marks in their “commercial communication”. Just one week before, however, we had discussed Rescuecom v Google (...), a case where the United Stated Court of Appeals for the Second Circuit come to the opposite conclusion on the exact same facts. According to the US court, there was a possibility that Google could be found liable for trade mark infringements and Google did indeed make use of the trade marks in question “in commerce”. 

These diverging judicial decisions drove Marsoof's attention to the subject of internet intermediaries and trade marks. 

The resulting monograph consists of 9 chapters: 

The first chapter, The internet, intermediaries and trade mark infringements, defines “internet intermediaries” and the issue of shifting the liability from individual infringers to intermediaries to then explain the reasons for a trade mark perspective. 

In the second chapter, Liability under trade mark law, Marsoof analyses the “use” requirement necessary to recognise as an infringement the unauthorised use of a trade mark by a third party. He recalls how keyword advertising works and the case law regarding this practice, and also the “commercial communication” requirement. 

In the third chapter, Accessory liability, the author observes that common law has became an attractive choice in exploring means by which internet intermediaries could be held liable for infringement of trade mark rights. He analyses the accessory liability regime in common law, the criminal accessory liability and accessory liability in tort. Finally, after declaring that it is for the courts to decide whether liability for providing assistance must be recognised as a general means of allocating accessorial liability for civil wrongs, Marsoof predicts how English courts could deal with these issues in the future.

In the fourth chapter, Approaches elsewhere – Across the English Channel and the Atlantic, the author recalls key EU directives and discusses relevant decisions in selected EU Member States, including eg France, Germany and Belgium, as well as in the U.S. 

In the fifth chapter, A proposal for law reforms, Marsoof considers the nature and scope of a a reform of the Trade Marks Act 1994 to broaden the notion of infringement so to encompass internet intermediaries sufficiently involved in infringing activities. 

In the sixth chapter, Notice and takedown, Marsoof underlines the problem with the abuse of notice and takedown by rights holders. He analyses how notice and takedown works in practice to propose legal reforms aimed at ensuring a healthy balance between the enforcement of trade mark rights and the protection of competing interests. 

In the seventh chapter, Notice and takedown and its impact on legitimate third-party uses of trade marks, the author identifies four categories of notices of infringement; clear-cut cases, context specific cases, trade mark bullying an frivolous assertions and he discusses the interplay between third-party use and free speech rights. 

In the eight chapter, Injunction against intermediaries –legal basis, Marsoof analyses the legal basis for injunctions against intermediaries in the copyright and in the trade mark context. In relation to the latter, he considers in detail the actual knowledge requirement and the requirement that the ISP’s services must have been used by third parties to commit infringements. 

In the final chapter, Injunction against intermediaries – practical considerations, the author considers the extent to which injunctive relief complies with the principles of natural justice, envisages safeguard against abuse and tackles circumvention and collateral damage. He also takes into consideration the costs involved in implementing the technical measures derived by an injunction.

This book would definitely appeal to anyone having an interest in trade mark law and the role that internet intermediaries could and should play in the enforcement process.

Hardcover ISBN 978-0-8153-8246-1 £115.00 

E-book ISBN 978-1-3512-0851-2 £33.29 

Available on Routledge Taylor and Francis Group