“Shu Uemura Great deals on Shu uemura Shop on eBay and Save! www.ebay.co.uk”
“Matrix hair Fantastic low prices here Feed your passion on eBay.co.uk! www.ebay.co.uk”
“Soft Sheen Great prices on hair care products Feed your passion on eBay.co.uk! www.ebay.co.uk.haircare”
“Magie Noire Fantastic low prices on fragrances Buy it. Sell it. Love it. eBay. www.ebay.co.uk/fragrances”
“...if and in so far as I am being invited at this stage to restrict L'Oreal to the 17 particular instances, I decline to do so. That said, there will, in my judgment, be a limit to the extent to which the court is in a position to reach a conclusion upon abstract allegations of infringement as opposed to sufficiently particularised ones. That as it seems to me at this stage is a hurdle that will need to be crossed by L'Oreal, but it does not mean that they should be summarily shut out from attempting to do so.”
“Introduction Welcome to eBay. These terms and conditions apply to the services available from the domain and sub-domains of eBay.co.uk (which include, but are not limited to, ebaymotors.co.uk), and from all other eBay-branded websites provided for U.K. users. If you reside in the U.K. or another country that is a member of the E.U., by using the services on the eBay websites (eBay.co.uk, eBay.com and other related websites where this agreement appears) you are agreeing to the following terms including those available by hyperlink, with eBay Europe S.à.r.l. ..., and the general principles for the websites of our subsidiaries and international affiliates. If you reside within the United States, you are contracting with eBay, Inc. In all other countries, your contract is with eBay International AG. ... Before you may become a member of eBay, you must read and accept all of the terms and conditions in, and linked to, this User Agreement. We strongly recommend that, as you read this User Agreement, you also access and read the linked information. By accepting this user agreement, you also agree that your use of some eBay-branded website or websites we operate may be governed by separate user agreements and privacy policies. The agreement that applies on any of our domains and subdomains is always the agreement that appears in the footer of each website. The User Agreement constitutes a legally binding agreement between you and eBay. ... Using eBay You may not use our sites and services if you are under the age of 18 or you are not able to form legally binding contracts, or if your eBay membership has been suspended. While using eBay you will not: • post list or upload content or items in an inappropriate category or areas on our sites; • breach any laws, sell any counterfeit items or otherwise infringe the copyright, trademark or other rights of third parties; • breach our policies including, without limitation, the Prohibited and Restricted Items policies and the other policies linked to from the "Additional terms" section below; • fail to deliver payment for items purchased by you, unless the seller has materially changed the item's description after you bid, a clear typographical error is made, or you cannot authenticate the sender's identity; • fail to deliver items purchased from you, unless the buyer fails to meet the posted terms, or you cannot authenticate the buyer's identity; … • post false, inaccurate, misleading, defamatory, or libellous content (including personal information); ... If you are registering with eBay as a business entity, you represent that you have the authority to legally bind that entity. If you are trading as a business on eBay, you must comply with all applicable laws relating to online trading (please see Business Selling Explained for more information). … Abusing eBay eBay and the eBay community work together to keep our sites and services working properly in the community safe. Please report problems, offensive content and policy breaches to us. eBay’s Verified Rights Owner (VeRO) program works to ensure that listed items do not infringe upon the copyright trademark or other rights of third parties. If you believe your rights have been infringed, please notified our VeRO team through our Verified Rights Owner (VeRO) programme and we will investigate. Without limiting other remedies, we may issue you with warnings, limit, suspend, all terminate our service and user accounts, restrict or prohibit access to, and your activities on, the sites (including, without limitation, cancelling bids and removing listings), delay or remove hosted content, and take technical and legal steps to keep you off our sites if: • we think that you are creating problems (including without limitation by harassing eBay style for other users or making unreasonable legal threats against eBay), or exposing us or another eBay user to financial loss or legal liabilities; • we think that you are acting inconsistency with the letter or spirit of this Agreement or our policies; • despite our reasonable endeavours we are unable to verify or authenticate any information you provide to us; or • you earn in a feedback rating of -4. ... You agree not to hold eBay responsible for any loss you may occur as a result of eBay taking any of the actions described above. ... Compensation You agree that you will only use our sites and services in accordance with this Agreement. You will compensate us in full … for any losses or costs, including reasonable legal fees, we incur arising out of any breach by you of this Agreement or your violation of any law or the rights of a third party. No agency No agency, partnership, joint venture, employee-employer or franchisor-franchisee relationship is intended or created by this Agreement. Resolution of disputes … This agreement shall be governed and construed in all respects by the laws of England and Wales. You and eBay both agree to submit to the exclusive jurisdiction of the English courts; …. Additional terms The following policies (together with all further policies that can be access via click-through links contained in such policies) are part of this Agreement and provide additional terms and conditions related to specific services offered on our sites. We expect you to read all of the linked documents carefully: • Prohibited and Restricted Items • Identity • Rules for Buyers • Rules for Sellers • Rules for Everyone ... ”
“If you are only making your item available to buyers within your country, be sure to state this clearly in the listing. … If you are making your item available to eBay buyers outside your country, be sure to also include international postage costs.” v) How to Manage and Complete your Sales. This page explains how sellers can keep track of their complete sales history using My eBay’s All Selling Page. It also advises users how to complete sales, including reminding them not to post the item before receiving payment and to leave feedback. vi) Guidelines for Creating Legally Compliant Listings. This page provides general advice on how to create listings that do not infringe third party intellectual property rights. It advises sellers, for example, to create their own listings, use brand names appropriately and make sure the item is authentic. vii) About selling internationally. This page states that “Choosing to offer your item internationally as well as to the United Kingdom or Ireland may significantly increase the number of potential buyers you reach”
“Important: When selling internationally please verify you’re complying with foreign laws, which can differ from your local laws and restrict sales of authentic products. Get details about international trading.”
“Currencies There are two key features that help international buyers convert the price of your item to the currencies they understand: Bids and prices on the item page automatically display in both the currency you specify and the approximate home currency equivalent for the site from which the buyer is viewing the item. A buyer can convert all Search and Listings prices to local site currency by clicking the Show all prices in local currency (for example, US dollars on the US site) link in the Show box on the Search and Listings pages of all non-UK eBay sites. For information about how to allow your international buyers to pay for items using different currencies, see Using PayPal Internatonally.”
“Items that are listed in a currency other than Pounds Sterling display the converted amount in italicized text. Converted amounts shown are estimates based on Bloomberg’s conversion rates. If you need to get recent exchange rates, please use the Universal Currency Converter.”
“I am the owner, or any agent authorised to act on behalf of the owner, of certain intellectual property rights (‘IP Owner’); I have a good faith belief that the listings identified below (by item) offer items or contain materials that are not authorised by the IP Owner, its agent, or the law, and therefore infringe the IP Owner’s rights according to English law; and I make this declaration conscientiously believing it to be true and correct and in accordance with English law.”
“Unboxed & untested Sorry due to country restrictions there will be no sales to Germany on this item Anyone from Germany who purchases this item will have the transaction cancelled and the item relisted All other European countries are welcome to purchase”
“… some of the items I sell are GWP [gift with purchase] products” and may have ‘Not for individual resale or something similar printed on them….”
“Please note that in order to comply with German law I cannot ship to Germany.”
“Article 5 Rights conferred by a trade mark 1. The registered trade mark shall confer on the proprietor exclusive rights therein. The proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade: (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark 2. Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. 3. The following, inter alia, may be prohibited under paragraphs 1 and 2: … (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign on business papers and in advertising. … 5. Paragraphs 1 to 4 shall not affect provisions in any Member State relating to the protection against the use of a sign other than for the purpose of distinguishing goods or services, where use of that sign without due cause take unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark. Article 6 Limitation of the effects of a trade mark 1. The trade mark shall not entitle the proprietor to prohibit a third party from using, in the course of trade, … (b) indications concerning the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters. … Rights conferred by a trade mark (a) any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered; (b) any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark … (b) offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; (c) importing or exporting the goods under the sign; (d) using the sign on business papers and in advertising. Article 6 Limitation of the effects of a trade mark … (b) indications concerning the kind, quality, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services; (c) the trade mark where it is necessary to indicate the intended purpose of a product or service, in particular as accessories or spare parts; provided he uses them in accordance with honest practices in industrial or commercial matters. Article 7 Exhaustion of the rights conferred by a trade mark 1. The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. 2. Paragraph 1 shall not apply where there exist legitimate reasons for the proprietor to oppose further commercialization of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.”
“26. In addition, on the basis of the BMW judgment, the referring court asks whether there may be use by Autec of the Opel logo in its capacity as a trade mark registered for motor vehicles 27. In that respect, it is true that BMW concerned the use of a sign identical to the trade mark for services which were not identical to those for which that trade mark was registered, since the BMW trade mark, at issue in the main proceedings, was registered for vehicles but not for vehicle repair services. However, the vehicles marketed under the BMW trade mark by the proprietor of that mark constituted the subject-matter of the services – the repairing of vehicles – supplied by the third party, so that it was essential to identify the origin of the BMW cars, the subject-matter of those services. It was having regard to that specific and indissociable link between the products bearing the trade mark and the services provided by the third party that the Court of Justice held that, in the specific circumstances of the BMW case, use by the third party of the sign identical to the trade mark in respect of goods marketed not by the third party but by the holder of the trade mark fell within Article 5(1)(a) of the directive. 28. Apart from that specific case of use of a trade mark by a third-party provider of services having as subject-matter the products bearing that trade mark, Article 5(1)(a) of the directive must be interpreted as covering the use of a sign identical to the trade mark in respect of goods marketed or services supplied by the third party which are identical to those in respect of which the trade mark is registered. 29. First of all, the interpretation whereby the goods or services referred to in Article 5(1)(a) of the directive are those marketed or supplied by the third party follows from the wording of that provision itself, particularly the words ‘using … in relation to goods or services’. Secondly, the contrary interpretation could lead to the words ‘goods’ and ‘services’ used in Article 5(1)(a) of the directive designating goods or services of the trade mark proprietor, whereas the words ‘goods’ and ‘service’ appearing in Article 6(1)(b) and (c) of the directive necessarily refer to those marketed or supplied by the third party, thereby leading, contrary to the scheme of the directive, to interpreting the same words in a different way according to whether they appear in Article 5 or in Article 6. 30. In the main proceedings, since Autec does not sell vehicles, there is no use of the Opel logo by Autec as a trade mark registered for motor vehicles, for the purposes of Article 5(1)(a) of the directive.”
“33. Use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, a competitor’s mark may constitute use within the meaning of Article 5(1) and (2) of Directive 89/104. 34. First, Article 5(1) and (2) of Directive 89/104 must be interpreted as covering the use of a sign identical with, or similar to, the trade mark in respect of goods marketed or services supplied by the third party (see, to that effect, as regards Article 5(1)(a) of Directive 89/104,Case C-48/05 Adam Opel[2007] ECR I-1017 , paragraph 28). 35. Second, an advertisement in which the advertiser compares the goods and services which he markets with those of a competitor is aimed, evidently, at promoting the goods and services of that advertiser. With such an advertisement the advertiser seeks to distinguish his goods and services by comparing their characteristics with those of competing goods and services. That analysis is confirmed by recital 15 in the preamble to Directive 97/55, in which the Community legislature pointed out that the aim of comparative advertising is to distinguish between the goods and services of the advertiser and those of his competitor (seeCase C-112/99 Toshiba Europe[2001] ECR I-7945 , paragraph 53). 36. Therefore, the use by an advertiser, in a comparative advertisement, of a sign identical with, or similar to, the mark of a competitor for the purposes of identifying the goods and services offered by the latter can be regarded as use for the advertiser’s own goods and services for the purposes of Article 5(1) and (2) of Directive 89/104.”
“Accordingly, the Court has already held that damage done to the reputation of a trade mark may, in principle, be a legitimate reason, within the meaning of Article 7(2) of the Directive, allowing the proprietor of the mark to oppose further commercialisation of luxury goods which have been put on the market in the EEA by him or with his consent (see Parfums Christian Dior, paragraph 43, andCase C-63/97 BMW[1999] ECR I-905 , paragraph 49).”
“51. It follows that the exclusive right under Article 5(1)(a) of the Directive was conferred in order to enable the trade mark proprietor to protect his specific interests as proprietor, that is, to ensure that the trade mark can fulfil its functions. The exercise of that right must therefore be reserved to cases in which a third party's use of the sign affects or is liable to affect the functions of the trade mark, in particular its essential function of guaranteeing to consumers the origin of the goods. 52. The exclusive nature of the right conferred by a registered trade mark on its proprietor under Article 5(1)(a) of the Directive can be justified only within the limits of the application of that article. 53. It should be noted that Article 5(5) of the Directive provides that Article 5(1) to (4) does not affect provisions in a Member State relating to protection against the use of a sign for purposes other than that of distinguishing goods or services. 54. The proprietor may not prohibit the use of a sign identical to the trade mark for goods identical to those for which the mark is registered if that use cannot affect his own interests as proprietor of the mark, having regard to its functions. Thus certain uses for purely descriptive purposes are excluded from the scope of Article 5(1) of the Directive because they do not affect any of the interests which that provision aims to protect, and do not therefore fall within the concept of use within the meaning of that provision (see, with respect to a use for purely descriptive purposes relating to the characteristics of the product offered,Case C-2/00 Hölterhoff[2002] ECR I-4187 , paragraph 16). 55. In this respect, it is clear that the situation in question in the main proceedings is fundamentally different from that in Hölterhoff. In the present case, the use of the sign takes place in the context of sales to consumers and is obviously not intended for purely descriptive purposes. 56. Having regard to the presentation of the word ‘Arsenal’ on the goods at issue in the main proceedings and the other secondary markings on them (see paragraph 39 above), the use of that sign is such as to create the impression that there is a material link in the course of trade between the goods concerned and the trade mark proprietor. … 59. The goods at issue are in fact supplied outside the control of Arsenal FC as trade mark proprietor, it being common ground that they do not come from Arsenal FC or from its approved resellers. 60. In those circumstances, the use of a sign which is identical to the trade mark at issue in the main proceedings is liable to jeopardise the guarantee of origin which constitutes the essential function of the mark, as is apparent from the Court's case-law cited in paragraph 48 above. It is consequently a use which the trade mark proprietor may prevent in accordance with Article 5(1) of the Directive.”
“i) Articles 5 to 7 of the Directive must be construed as embodying a complete harmonisation of the rules relating to the rights conferred by a trade mark and accordingly define the rights of proprietors of trade marks in the Community/EEA; ii) national rules providing for exhaustion of trade mark rights in respect of goods put on the market outside the EEA by the proprietor or with his consent are contrary to Article 7(1) of the Directive as amended by the EEA Agreement; iii) for there to be consent within the meaning of Article 7(1) such consent must relate to each individual item of the product in respect of which exhaustion of rights is pleaded; iv) the trade mark proprietor's consent to the marketing of goods within the EEA may be implied where it is to be inferred from facts and circumstances which unequivocally demonstrate that the proprietor has renounced his right to oppose placing of the goods on the market within the EEA. v) Implied consent cannot be inferred from: a) the fact that the proprietor has not communicated his opposition to marketing within the EEA to all subsequent purchasers of goods placed on the market outside the EEA; or b) from the fact that the goods carry no warning of a prohibition on their being placed on the market within the EEA; c) or from the fact that the proprietor has transferred the ownership of the goods without imposing a contractual reservation and that, according to the law governing the contract, the rights transferred includes, in the absence of such a reservation, an unlimited right of resale or at least a right to market the goods within the EEA.” a) the fact that the proprietor has not communicated his opposition to marketing within the EEA to all subsequent purchasers of goods placed on the market outside the EEA; or b) from the fact that the goods carry no warning of a prohibition on their being placed on the market within the EEA; c) or from the fact that the proprietor has transferred the ownership of the goods without imposing a contractual reservation and that, according to the law governing the contract, the rights transferred includes, in the absence of such a reservation, an unlimited right of resale or at least a right to market the goods within the EEA.”
“39. In the present case, it is not disputed that, where he sells goods bearing his trade mark to a third party in the EEA, the proprietor puts those goods on the market within the meaning of Art.7(1) of the Directive. 40. A sale which allows the proprietor to realise the economic value of his trade mark exhausts the exclusive rights conferred by the Directive, more particularly the right to prohibit the acquiring third party from reselling the goods. 41. On the other hand, where the proprietor imports his goods with a view to selling them in the EEA or offers them for sale in the EEA, he does not put them on the market within the meaning of Art.7(1) of the Directive. 42. Such acts do not transfer to third parties the right to dispose of the goods bearing the trade mark. They do not allow the proprietor to realise the economic value of the trade mark. Even after such acts, the proprietor retains his interest in maintaining complete control over the goods bearing his trade mark, in order in particular to ensure their quality. 43. Moreover, it should be noted that Art.5(3)(b) and (c) of the Directive, relating to the content of the proprietor's exclusive rights, distinguishes inter alia between offering the goods, putting them on the market, stocking them for those purposes and importing them. The wording of that provision therefore also confirms that importing the goods or offering them for sale in the EEA cannot be equated to putting them on the market there. 44. The answer to the first question must therefore be that Art.7(1) of the Directive must be interpreted as meaning that goods bearing a trade mark cannot be regarded as having been put on the market in the EEA where the proprietor of the trade mark has imported them into the EEA with a view to selling them there or where he has offered them for sale to consumers in the EEA, in his own shops or those of an associated company, without actually selling them.”
“I.a) … The proprietor of the mark is thereby granted the opportunity to realise the economic value of his trade mark. For that reason, ‘putting on the market’ is deemed to have taken place if the proprietor of the mark has transferred to a third party the right to dispose of the goods bearing the mark, and has thereby realised the economic value of the mark (ECJ judgment of November 30, 2004 – Peak Holding AB v Axolin-Elinor AB (C-16/03)[2004] ECR I-11313 ;[2005] 1 CMLR 45 ; [2005] GRUR, 507 at [40-[42]+Marken R 2005, 41).Therefore, a transfer of the right to dispose of the goods does not only take place if the proprietor of the mark has sold the goods bearing the mark to a third party within the European Community, but also if he has passed them on to customers within the European Community for the use of any third party, as in the case at issue. In so far as the claimant has given the tester bottles of perfume to the depositaries for the purpose of further passing on the essence of the product to consumers, it has transferred the right to dispose of the goods bearing the trade mark to third parties and has realised the economic value of the trade mark through distribution for use for advertising purposes. It has thereby relinquished the possibility of controlling the further distribution of the trade marked goods within the European Community. As the Appeal Court has correctly accepted, neither the claimant's selective distribution system, nor the agreement in no. 5(2) of the standard form distribution contract change that in any way. The same applies where the claimant is not the proprietor of the mark itself, but rather gives the trade marked goods to its customers as a licensee. b) In the case law it is however recognised that putting on the market does not take place through the mere movement of goods within one undertaking between different establishments of the trade mark proprietor, or by trade in goods within a group of companies, by means of which the goods are made available for sale to a linked undertaking within the group (ECJ [2005] GRUR, 507, para.44— Peak Holding AB v Axolin-Elinor AB (cited above); BGH, judgment of April 27, 2006— I ZR 162/03, [2006] GRUR, 863, para.15 = WRP 2006, 1233— Ex works). However, there is no group company relationship between the claimant and its depositaries, and the supply relationship between them is not comparable to the management authority exercised within a group of companies. The depositaries are third-party undertakings independent of the claimant, which are only subject to any obligations within the framework of contractual arrangements. c) Rule no. 5(2) in the standard form distribution contract equally does not prevent the loss by the claimant, with the giving of the tester bottles of perfume to the depositaries, of the chance to control the product by means of a further supply of the trade marked goods. In that context the provisions agreed by the claimant with its depositaries are not of decisive significance. The deciding factor is rather the purpose for which it has left the tester bottles of perfume with its depositaries, and which includes the consumption of the scent by the public. The agreement restricting the purpose for which the perfumes may be used by the depositaries for testing by the general public is comparable to an agreement on territorial restrictions on distribution. Such restrictions only affect the relationship between the parties to the distribution contract and cannot exclude exhaustion of rights (ECJ [2005] GRUR, 507, para.54 et seq.— Peak Holding AB v Axolin-Elinor AB (cited above); BGH [2006] GRUR, 863, para.16— Ex works). The agreement in no. 5(2) of the standard form contract does not present an obstacle to a finding that the product has been put on the market within the meaning of §24(1) of the Trade Mark Act if it is to be interpreted as meaning that the claimant does not transfer the property in the tester bottles of perfume to its customers. This gives the proprietor of the mark just as little control over trade marked goods given to customers who are not part of its group of companies as a contractual agreement restricting distribution. d) The appeal in cassation is unsuccessful in asserting that the character of the products which are given solely for consumption is changed in a way that excludes exhaustion by the fact that these are turned into goods for sale. It argues that sale is an act of exploitation which is not relinquished by the proprietor of the mark in the first grant of the goods solely for use. We cannot follow that view. Putting the trade marked goods on the market involves exhaustion of all rights of use (cf. on Art.7(1) of the Trade Mark Directive (EEC Directive 89/104): ECJ [2005] GRUR, 507, para.53— Peak Holding AB v Axolin-Elinor AB (cited above). … 3. There is no need to request a preliminary ruling from the Court of Justice of the European Communities, because there is no reasonable doubt as to the interpretation of the concept of putting on the market under Art.7(1) of the EEC Trade Mark Directive…”
“(1) Subject to paragraphs (5)(b) and (9) to (12) below, no person shall supply a cosmetic product unless the packaging in which it is supplied bears, in lettering which is visible, indelible and easily legible, a list of its cosmetics ingredients (preceded by the word ‘ingredients’) in descending order of weight, the weight to be determined at the time the ingredients are added to the product. (2) Subject to paragraphs (3), (4), (5)(a), (6) to (8), (13) and (14) below, no person shall supply a cosmetic product unless the container and packaging in which it is supplied bear the following particulars in lettering and other symbols (where appropriate) which is visible, indelible and easily legible – … (b) in the case of a cosmetic product likely before the end of 30 months from the manufacture thereof to cease either to comply with the requirements of regulation 4 or to fulfil the purpose for which it was intended, the words ‘Best before….’ immediately followed by - (i) the earliest date on which it is likely so to cease; or (ii) an indication of where that date appears on the labelling, and any particular precautions to be observed to ensure that the product does not so cease before that date.” (b) in the case of a cosmetic product likely before the end of 30 months from the manufacture thereof to cease either to comply with the requirements of regulation 4 or to fulfil the purpose for which it was intended, the words ‘Best before….’ immediately followed by - (i) the earliest date on which it is likely so to cease; or (ii) an indication of where that date appears on the labelling, and any particular precautions to be observed to ensure that the product does not so cease before that date.”
“(4) Is Article 7(2) of the Directive to be interpreted in such a way that legitimate reasons for the proprietor to oppose further commercialisation of his goods include any actions by a third party which affect to a substantial extent the value, allure or image of the trade mark or the goods to which it is applied? (5) Is Article 7(2) of the Directive to be interpreted in such a way that legitimate reasons for the proprietor to oppose further commercialisation of his goods include the removal or obliteration by third parties (in whole or in part) of any markings on the goods where such removal or obliteration is not likely to cause any serious or substantial damage to the reputation of the trade mark or the goods bearing the mark? (6) Is Article 7(2) of the Directive to be interpreted in such a way that legitimate reasons for the proprietor to oppose further commercialisation of his goods include the removal or obliteration by third parties (in whole or in part) of batch code numbers on the goods where such removal or obliteration results in the goods in question (i) offending against any part of the criminal code of a Member State (other than a part concerned with trade marks) or (ii) offending against the provisions of Directive 76/768/EEC?” (i) offending against any part of the criminal code of a Member State (other than a part concerned with trade marks) or (ii) offending against the provisions of Directive 76/768/EEC?”
“(4) On a proper construction of Article 7(2) of the Trade Marks Directive, the legitimate reasons which justify a trade mark proprietor in opposing further commercialisation of products bearing the trade mark include any actions of third parties which seriously affect the value, allure or image of the trade mark or the products which bear that mark. (5) On a proper construction of Article 7(2) of the Trade Marks Directive, the legitimate reasons which justify a trade mark proprietor in opposing further commercialisation of products bearing the trade mark do not include the actions of third parties or circumstances which do not affect the rights constituting the specific subject-matter and essential function of the rights conferred by the trade mark.”
“What were the consequences in law, first of Amstrad knowing that the majority of those who bought their machines would use them to copy unlawfully pre-recorded cassettes protected by copyright and, secondly, of their intention to supply that market? … I am satisfied that mere knowledge on the part of the supplier of equipment that it would probably be used to infringe someone’s copyright does not make the supply unlawful; nor does an intention to supply the market for such user.”. “… mere supplying with knowledge and intent will not be enough to make the supplier himself an infringer or a joint tortfeasor with someone who is. ... the law relating both to patents and copyrights is in restraint of trade. Patentees and the owners of copyright have the rights given to them by statute and no others. Those who infringe those rights are penalised. Acts short of infringement are not. Amstrad’s supplying therefore was not an act of infringement.”
“B.P.I. next submitted that Amstrad were joint infringers; they became joint infringers if and as soon as a purchaser decided to copy a record in which copyright subsisted; Amstrad could become joint infringers not only with the immediate purchaser of an Amstrad model but also with anyone else who at any time in the future used the model to copy records. My Lords, Amstrad sell models which include facilities for receiving and recording broadcasts, disc records and taped records. All these facilities are lawful although the recording device is capable of being used for unlawful purposes. Once a model is sold Amstrad have no control over or interest in its use. In these circumstances the allegation that Amstrad is a joint infringer is untenable.” “My Lords, joint infringers are two or more persons who act in concert with one another pursuant to a common design in the infringement. In the present case there was no common design. Amstrad sold a machine and the purchaser or the operator of the machine decided the purpose for which the machine should from time to time be used. The machine was capable of being used for lawful or unlawful purposes. All recording machines and many other machines are capable of being used for unlawful purposes but manufacturers and retailers are not joint infringers if purchasers choose to break the law. Since Amstrad did not make or authorise other persons to make a record embodying a recording in which copyright subsisted, Amstrad did not entrench upon the exclusive rights granted by the Act of 1956 to copyright owners and Amstrad were not in breach of the duties imposed by the Act.” “My Lords, I accept that a defendant who procures a breach of copyright is liable jointly and severally with the infringer for the damages suffered by the plaintiff as a result of the infringement. The defendant is a joint infringer; he intends and procures and shares a common design that infringement shall take place. A defendant may procure an infringement by inducement, incitement or persuasion. But in the present case Amstrad do not procure an infringement by offering for sale a machine which may be used for lawful or unlawful copying and they do not procure infringement by advertising the attractions of their machine to any purchaser who may decide to copy unlawfully. … The purchaser will not make unlawful copies because he has been induced or incited or persuaded to do so by Amstrad. The purchaser will make unlawful copies for his own use because he chooses to do so. Amstrad’s advertisements may persuade the purchaser to buy an Amstrad machine but will not influence the purchaser’s later decision to infringe copyright. Buckley LJ observed in Belegging-en Exploitatiemaatschappij Lavender BV v Witten Industrial Diamonds Ltd, at p. 65, that 'Facilitating the doing of an act is obviously different from procuring the doing of an act.' ... Generally speaking, inducement, incitement or persuasion to infringe must be by a defendant to an individual infringer and must identifiably procure a particular infringement in order to make the defendant liable as a joint infringer.” “Under and by virtue of [theCopyright Act 1956 ] Amstrad owed a duty not to infringe copyright and not to authorise an infringement of copyright. They did not owe a duty to prevent or discourage or warn against infringement.”
“I have set out these cases in some detail in deference to the care with which they were analysed during the argument on this appeal. In truth, however, I believe that they do little more than illustrate how in various factual situations the courts have applied principles which are no longer in doubt, save perhaps as regards the relationship between indirect infringements by procuring and by participation in a common design. There may still be a question whether these are distinct ways of infringing, or different aspects of a single way. I prefer the former view, although of course a procurement may lead to a common design, and hence qualify under both heads. We need not however explore this question, since Mr. Gratwick has (rightly, in my judgment) disclaimed any reliance on that part of his clients' pleaded case which is founded on procurement, and has concentrated his arguments on the allegation of a common design. As to the authorities on this subject, if I am right in the view just expressed that they are really cases on the facts, I suggest that little is to be gained by matching the circumstances of each case against each of the allegations in the draft amended statement of claim. For my part I prefer to take the relevant part of the amendment as a whole, and to ask whether, if the allegations therein are proved to be true (and there seems no dispute that they will be), and if they are set in the context of the relationship between the companies in the Gillette Group, when that has emerged at the trial, a judge directing himself correctly could reasonably come to the conclusion that - (a) there was a common design between Boston and G.U.K. to do acts which, if the patent is upheld, amounted to infringements, and (b) Boston has acted in furtherance of that design. I use the words ‘common design’ because they are readily to hand, but there are other expressions in the cases, such as ‘concerted action’ or ‘agreed on common action’ which will serve just as well. The words are not to be construed as if they formed part of a statute. They all convey the same idea. This idea does not, as it seems to me, call for any finding that the secondary party has explicitly mapped out a plan with the primary offender. Their tacit agreement will be sufficient. Nor, as it seems to me, is there any need for a common design to infringe. It is enough if the parties combine to secure the doing of acts which in the event prove to be infringements.”
“The overall effect of these cases is clear. It is only conduct which comes into the first or the third of the categories I have set out above which constitute the commission of a tort. The criminal law for obvious policy reasons goes further than the civil law. Acts which knowingly facilitate the commission of a crime amount to the crime of aiding and abetting but they do not amount to a tort or make the aider liable as a joint tortfeasor. … Accordingly, in my judgment there is no second category in the law of tort. Mere assistance, even knowing assistance, does not suffice to make the ‘secondary’ party liable as a joint tortfeasor with the primary party. What he does must go further. He must have conspired with the primary party or procured or induced his commission of the tort (my first category); or he must have joined in the common design pursuant to which the tort was committed (my third category).”
“The underlying concept for joint tortfeasance must be that the joint tortfeasor has been so involved in the commission of the tort as to make himself liable for the tort. Unless he has made the infringing act his own, he has not himself committed the tort. That notion seems to us what underlies all the decisions to which we were referred. If there is a common design or concerted action or otherwise a combination to secure the doing of the infringing acts, then each of the combiners has made the act his own and will be liable. Like the judge, we do not think that what was done by Meneghetti was sufficient. It was merely acting as a supplier of goods to a purchaser which was free to do what it wanted with the goods. Meneghetti did not thereby make MFI's infringing acts its own.”
“The circumstances which justified the making of the unappealed order for disclosure raised an issue as to whether there is any subsisting liability for acts on the part of D4 to D8 in respect of which the eBay Defendants could be said to be jointly liable as alleged in paragraph 36 of the Particulars of Claim. L’Oréal could easily have provided documents and evidence as to the subsistence of such liability. They have not done so. The Court should not speculate as to whether the disclosure and evidence which has not been provided would have established the subsistence of such liability.”
“The question that arises is the usual one: which of the two innocent persons is to suffer? Is the loss to fall on the owners? … Or on the auctioneers? … In answering that question in cases such as this, the common law has always acted on the maxim nemo dat quod non habet. It has protected the property rights of the true owner. It has enforced them strictly as against anyone who deals with the goods inconsistently with the dominion of the true owner. Even though the true owner may have been very negligent and the defendant may have acted in complete innocence, nevertheless the common law held him liable in conversion. Both the ‘innocent acquirer’ and the ‘innocent handler’ have been hit hard. That state of the law has often been criticised. It has been proposed that the law should protect a person who buys goods or handles them in good faith without notice of any adverse title, at any rate where the claimant by his own negligence or otherwise has largely contributed to the outcome. Such proposals have however been effectively blocked by the decisions of the House of Lords in the last century of Hollins v Fowler (1875) L.R. 7 H.L. 757, and in this century of Moorgate Mercantile Co. Ltd v Twitchings [1977] A.C. 890, to which I may add the decision of this court in Central Newbury Car Auctions Ltd v Unity Finance Ltd [1957] 1 Q.B. 371. In some instances the strictness of the law has been mitigated by statute, as for instance, by the protection given to private purchasers by the Hire-Purchase Acts. But in other cases the only way in which the innocent acquirers or handlers have been able to protect themselves is by insurance. They insure themselves against their potential liability. This is the usual method nowadays. When men of business or professional men find themselves hit by the law with new and increasing liabilities, they take steps to insure themselves, so that the loss may not fall on one alone, but be spread among many. It is a factor of which we must take account: see Post Office v Norwich Union Fire Insurance Society Ltd [1967] 2 Q.B. 363, 375 and Morris v Ford Motor Co. Ltd [1973] 1 Q.B. 792, 801.” “It is clear that the auctioneers insure against both kinds of sale equally. On every one of the sales, under the hammer or on provisional bids, the auctioneers charge an ‘indemnity fee’ to the purchaser. He has to pay a premium of£2 on each vehicle purchased. In return for it the auctioneers … through an associate company … insure the purchaser against any loss he may suffer through any defect in title of the seller. So if the true owner comes along and re-takes the goods from the purchaser or makes him pay damages for conversion, the auctioneers (through their associate company) indemnify the purchaser against the loss. The premium thus charged by the auctioneers (through their associate company) is calculated to cover the risk of the seller having no title or a defective title. That risk is the same no matter whether the true owner sues the auctioneer or the purchaser. … This system is the commercial way of doing justice between the parties. It means that all concerned are protected. The true owner is protected by the strict law of conversion. He can recover against the innocent acquirer and the innocent handler. But those innocents are covered by insurance so that the loss is not borne by any single individual but is spread through the community at large. The insurance factor had a considerable influence on the Law Reform Committee. In view of it they did not recommend any change in the law see the 18th Report, paragraph 48 and note 2. So also it may properly have an influence on the courts in deciding issues which come before them.”
“The use of signs identical to the Link Marks on advertising links sponsored by eBay appearing on popular and well-known third party search websites. These link to products appearing on the Site from time to time which use such signs. Examples showing the use of such links are attached hereto as Annex 7.”
“This does not involve use of any L’Oreal trade marks ‘in relation to’ any particular goods offered for sale or supply by any of the eBay Defendants ‘in the course of trade.’ Moreover, to the extent that it involves use of any L’Oreal trade marks ‘in relation to’ any particular goods offered for sale or supply by any particular seller ‘in the course of trade’, the use cannot be stigmatised as infringing use except and unless it is directly hypothecated to infringing products.”
“So, no placing on the market, no infringement. The touchstone is clear.’”
“(42) The exemptions from liability established in this Directive cover only cases where the activity of the information society service provider is limited to the technical process of operating and giving access to a communication network over which information made available by third parties is transmitted or temporarily stored, for the sole purpose of making the transmission more efficient; this activity is of a mere technical, automatic and passive nature, which implies that the information society service provider has neither knowledge of nor control over the information which is transmitted or stored. (45) The limitations of the liability of intermediary service providers established in this Directive do not affect the possibility of injunctions of different kinds; such injunctions can in particular consist of orders by courts or administrative authorities requiring the termination or prevention of any infringement, including the removal of illegal information or the disabling of access to it. (46) In order to benefit from a limitation of liability, the provider of an information society service, consisting of the storage of information, upon obtaining actual knowledge or awareness of illegal activities has to act expeditiously to remove or to disable access to the information concerned; the removal or disabling of access has to be undertaken in the observance of the principle of freedom of expression and of procedures established for this purpose at national level; this Directive does not affect Member States' possibility of establishing specific requirements which must be fulfilled expeditiously prior to the removal or disabling of information. (47) Member States are prevented from imposing a monitoring obligation on service providers only with respect to obligations of a general nature; this does not concern monitoring obligations in a specific case and, in particular, does not affect orders by national authorities in accordance with national legislation. (48) This Directive does not affect the possibility for Member States of requiring service providers, who host information provided by recipients of their service, to apply duties of care, which can reasonably be expected from them and which are specified by national law, in order to detect and prevent certain types of illegal activities”
“Injunctions Member States shall ensure that, where a judicial decision is taken finding an infringement of an intellectual property right, the judicial authorities may issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. Where provided for by national law, non-compliance with an injunction shall, where appropriate, be subject to a recurring penalty payment, with a view to ensuring compliance. Member States shall also ensure that rightholders are in a position to apply for an injunction against intermediaries whose services are used by a third party to infringe an intellectual property right, without prejudice to Article 8(3) of Directive 2001/29/EC.”
“This Directive shall not affect: (a) the Community provisions governing the substantive law on intellectual property, Directive 95/46/EC, Directive 1999/93/EC or Directive 2000/31/EC, in general, and Articles 12 to 15 of Directive 2000/31/EC in particular”
“The High Court may by order (whether interlocutory or final) grant an injunction or appoint a receiver in all cases in which it appears to be just and convenient to do so.”
“The powers of courts with equitable jurisdiction to grant injunctions are, subject to any relevant statutory restrictions, unlimited. Injunctions are granted only when to do so accords with equitable principles, but this restriction involves, not a defect of powers, but an adoption of doctrines and practices that change in their application from time to time. Unfortunately, there have sometimes been made observations by judges that tend to confuse questions of jurisdiction or of powers with questions of discretions or of practice. The preferable analysis involves a recognition of the great width of equitable powers, an historical appraisal of the categories of injunctions that have been established and an acceptance that pursuant to general equitable principles injunctions may issue in new categories when this course appears appropriate.”
“Where, as in most jurisdictions, superior courts now exercise the powers of the former Court of Chancery, whether or not they are also able to grant legal injunctions or are affected by special Judicature Act provisions, their powers of granting injunctions are unlimited, provided that they have jurisdiction over the defendant in the circumstances in question. These powers are however exercised in accordance with the principles set out here under. First, an injunction may issue in the protection of any legal right whatever, save for an applicable statutory provision provides to the contrary. For these purposes the relevant legal right must ordinarily be a present right of the plaintiff, as opposed to a right that he merely expects or hopes to acquire in the future. Secondly, an injunction may issue in the enforcement of any equitable right. Here on a strict analysis the right to the injunction itself represents pro tanto the equitable right in question. Hence in ascertaining whether an injunction may be obtained on this basis it is necessary to determine whether injunctions of the relevant kind were formally granted in the exclusive or concurrent jurisdiction of courts of equity, and if not, whether the principles underlying those jurisdictions should nonetheless now be treated as rendering the grant of the injunction appropriate. Thirdly, an injunction may issue pursuant to its natural power to grant injunctions conferred in respect of a particular subject matter, such as family law or trade practises law. Fourthly, an injunction may issue in the protection of a legal privilege or freedom. So an injunction may be obtained to prevent a person from harassing the plaintiff. Likewise even if, on the principles that have been set out here, an injunction is not otherwise obtainable to enjoying the bringing or continuation of proceedings in another court - whether in an inferior court, a court of special jurisdiction or a foreign court - it may nevertheless be obtained if the bringing or continuation of those proceedings would be unconscionable. Injunctions of these kinds may be granted whether or not inconsistent proceedings have been or will be commenced in the forum. Fifthly, an injunction (such as a Mareva injunction or freezing order) may issue in other cases in which, on miscellaneous grounds, the conduct restraint would be unconscionable. It has been said in the House of Lords that this term includes conduct which is oppressive or vexatious or which interferes with the due process of the court. Heres. 37 of the Supreme Court Act 1981 and other such provisions merely confirm the width of the court’s inherent powers. ”
“If a man has in his possession or control goods the dissemination of which, whether in the way of trade or, possibly, merely by way of gifts (see Upmann v Forester, 24 Ch.D. 231) will infringe another's patent or trade mark, he becomes, as soon as he is aware of this fact, subject to a duty, an equitable duty, not to allow those goods to pass out of his possession or control at any rate in circumstances in which the proprietor of the patent or mark might be injured by infringement ensuing. The man having the goods in his possession or control must not aid the infringement by letting the goods get into the hands of those who may use them or deal with them in a way which will invade the proprietor's rights. Even though by doing so he might not himself infringe the patent or trade mark, he would be in dereliction of his duty to the proprietor. This duty is one which will, if necessary, be enforced in equity by way of injunction: see Upmann v Elkan, L.R. 12 Eq. 140, 7 Ch App 130.”
“It is, however, consistent practice of German courts that whenever an absolute right, i.e. a right which is enforceable against everyone, is in question a third person who has neither committed an infringement in his own right nor has aided and abetted the infringement of a principal infringer can be asked to stop any interference (‘Störung’) he has caused in the past. Sec. 1004 of the German Civil Code grants such a right to (permanent) injunctive relief to the proprietor against anybody who was caused an interference with the property. German courts apply this provision to interferences as with any other absolute right, i.e. intellectual property. This liability of the ‘interferer’ (‘Störer’) is related to a rule of reason, which takes into account that even such a liability limited to injunctive relief involves a duty to take care. Nobody shall be held liable as an interferer (Störer) if it would be unreasonable to burden him with a duty to examine whether or not his behaviour could interfere with the (intellectual) property of a third person. For example, a carrier who transports counterfeit goods from A to B may be an important link in the chain of causation leading to the infringing sales of the goods in B. Still he could not be held liable as an interferer (Störer) because it will be unreasonable to burden him with a duty to examine the goods he has to carry in regard to possible trademark infringements. Applying this doctrine to a host provider like RICARDO or eBay, that opens a platform for an internet auction, leads to the conclusion that there can be no ex ante examination of any infringing content of the vendors may want to put up for sale. If the host provider was expected to screen and control any contents before it is offered on the internet, this would clearly mean the end of such a business model. Taking into account the number of individual sales taking place on a platform of this kind, it can only be operated in a way that individual offers are put up the sale by the vendor without the assistance of the host provider. A duty to react in the case of infringement would, however, be reasonable once a clear infringement has been shown by the right holder. In this case the host provider should indeed be obliged to remove the infringing object from the platform and to install measures in order to prevent a repetition of such an infringement.”
“The solution found in the RICARDO judgment of the Bundesgerichtshof strikes a fair balance between intellectual property rights and the interests of host providers. On the one hand, it does not impose an unreasonable burden on the provider. On the other hand, it makes sure that the provider takes all reasonable steps to prevent further infringements of the same kind. It seems only fair that a provider, who would who would profit from the sales of counterfeit goods, does everything in his power to prevent such infringements. The balance struck by the German courts is in accordance with European law, but European law only allows such a balance without stipulating it. Hence there is room for further harmonisation, which would not only allow member states to strike such a balance but which would also would ask such a balance in order to give adequate protection to intellectual property rights.”
“… its requirements and scope have not yet been determined. This is particularly true with respect to legal offences committed online, i.e. through services provided by Internet Service Providers…”
“The Distance Selling Regulations provide protection to consumers in relation to any consumer distance contract. ‘Buy It Now’ sales advertised on the Site are covered by the scope of the Distance Selling Regulations. Accordingly, under the Distance Selling Regulations, ‘Buy It Now’ offers on the Site should provide the consumer with information in respect of the identity of the supplier and the supplier's address where the contract requires payment in advance. Relevant sellers on the Site do not provide such information, including the Fourth, Fifth, Sixth, Seventh and Eighth Defendants.”
“Interpretation 3. (1) In these Regulations - “breach” means contravention by a supplier of a prohibition in, or failure to comply with a requirement of, these Regulations; “business” includes a trade or profession; “consumer” means any natural person who, in contracts to which these Regulations apply, is acting for purposes which are outside his business; … “distance contract” means any contract concerning goods or services concluded between a supplier and a consumer under an organised distance sales or service provision scheme run by the supplier who, for the purpose of the contract, makes exclusive use of one or more means of distance communication up to and including the moment at which the contract is concluded; … “excepted contract” means a contract such as is mentioned in regulation 5(1); “means of distance communication” means any means which, without the simultaneous physical presence of the supplier and the consumer, may be used for the conclusion of a contract between those parties; and an indicative list of such means is contained in Schedule 1; … “operator of a means of communication” means any public or private person whose business involves making one or more means of distance communication available to suppliers; “period for performance” has the meaning given by regulation 19(2); … “supplier” means any person who, in contracts to which these Regulations apply, is acting in his commercial or professional capacity; and … Contracts to which these Regulations apply 4. These Regulations apply, subject to regulation 6, to distance contracts other than excepted contracts. Excepted contracts 5.(1) The following are excepted contracts, namely any contract - … (f) concluded at an auction. … Information required prior to the conclusion of the contract 7.(1) Subject to paragraph (4), in good time prior to the conclusion of the contract the supplier shall - (a) provide to the consumer the following information - (i) the identity of the supplier and, where the contract requires payment in advance, the supplier's address; (ii) a description of the main characteristics of the goods or services; (iii) the price of the goods or services including all taxes; (iv) delivery costs where appropriate; (v) the arrangements for payment, delivery or performance; (vi) the existence of a right of cancellation except in the cases referred to in regulation 13; (vii) the cost of using the means of distance communication where it is calculated other than at the basic rate; (viii) the period for which the offer or the price remains valid; and (ix) where appropriate, the minimum duration of the contract, in the case of contracts for the supply of goods or services to be performed permanently or recurrently; (b) inform the consumer if he proposes, in the event of the goods or services ordered by the consumer being unavailable, to provide substitute goods or services (as the case may be) of equivalent quality and price; and (c) inform the consumer that the cost of returning any such substitute goods to the supplier in the event of cancellation by the consumer would be met by the supplier.” “breach” means contravention by a supplier of a prohibition in, or failure to comply with a requirement of, these Regulations; “business” includes a trade or profession; “consumer” means any natural person who, in contracts to which these Regulations apply, is acting for purposes which are outside his business; … “distance contract” means any contract concerning goods or services concluded between a supplier and a consumer under an organised distance sales or service provision scheme run by the supplier who, for the purpose of the contract, makes exclusive use of one or more means of distance communication up to and including the moment at which the contract is concluded; … “excepted contract” means a contract such as is mentioned in regulation 5(1); “means of distance communication” means any means which, without the simultaneous physical presence of the supplier and the consumer, may be used for the conclusion of a contract between those parties; and an indicative list of such means is contained in Schedule 1; … “operator of a means of communication” means any public or private person whose business involves making one or more means of distance communication available to suppliers; “period for performance” has the meaning given by regulation 19(2); … “supplier” means any person who, in contracts to which these Regulations apply, is acting in his commercial or professional capacity; and … Excepted contracts … (f) concluded at an auction. Information required prior to the conclusion of the contract (a) provide to the consumer the following information - (i) the identity of the supplier and, where the contract requires payment in advance, the supplier's address; (ii) a description of the main characteristics of the goods or services; (iii) the price of the goods or services including all taxes; (iv) delivery costs where appropriate; (v) the arrangements for payment, delivery or performance; (vi) the existence of a right of cancellation except in the cases referred to in regulation 13; (vii) the cost of using the means of distance communication where it is calculated other than at the basic rate; (viii) the period for which the offer or the price remains valid; and (ix) where appropriate, the minimum duration of the contract, in the case of contracts for the supply of goods or services to be performed permanently or recurrently; (b) inform the consumer if he proposes, in the event of the goods or services ordered by the consumer being unavailable, to provide substitute goods or services (as the case may be) of equivalent quality and price; and (c) inform the consumer that the cost of returning any such substitute goods to the supplier in the event of cancellation by the consumer would be met by the supplier.”