Brand owners gain another tool in the war against counterfeits (Brands & IP Newsnotes - issue 3)
23 October 2016
Brand owners will welcome a ruling from the CJEU over the summer that an operator of a physical marketplace can be an ‘intermediary’ for the purposes of Article 11 of the IP Enforcement Directive.
This means that national courts may order injunctions against operators of physical marketplaces whose services are being used by third parties (such as stall holders) to infringe IP rights.
Tommy Hilfiger (and others), found various stalls at a large market in Prague had been selling counterfeit goods. They sought an injunction against the market operator to refrain from:
- entering into or extending contracts with market traders who were selling counterfeit goods; and
- entering into or extending contracts with market traders that did not contain an obligation on the market trader to refrain from infringing IP rights.
The rulingThe Court held the distinction between an online operator and an offline operator of services is irrelevant in determining whether or not an operator is an intermediary. Whilst the conditions that had to be satisfied to obtain an injunction was a matter for national law, the Court provided a helpful reminder that injunctions must be: equitable and proportionate; not excessively expensive; not a barrier to legitimate trade; and not require a general and permanent oversight of intermediaries’ customers.
The judgment makes sense given the purpose of the IP Enforcement Directive was to achieve a high, equivalent and homogeneous level of protection for IP across the EU. It is good news for brand owners who have difficulty in tackling physical sales of counterfeit goods in large markets. However, it will be interesting to see what steps the English courts will be prepared to order an operator of a physical marketplace to take to avoid its services being used to infringe third party IP rights.
This article was first published in the Brands & IP newsnotes publication - issue 3.
IPO doesn’t see anything wrong with Specsavers’ trade mark (Brands & IP Newsnotes - issue 3)23 October 2016
Specsavers has managed to get its application to register “should’ve” (as in, “should’ve gone to Specsavers”) past the examination stage at the UK’s Intellectual Property Office (IPO).
Can you tell what it is yet? (Brands & IP Newsnotes - issue 3)23 October 2016
Those looking to register shapes as trade marks have had a tough time of it recently. Attempts to register the shape of a Kit Kat, various bottles and a toothbrush have all recently failed in the UK and EU.
Karen Millen - lessons from an SPA (Brands & IP Newsnotes - issue 3)23 October 2016
Karen Millen, founder of the Karen Millen fashion brand has lost a High Court challenge to use her own name for homeware in the US and China.
Pay to play (Brands & IP Newsnotes - issue 3)23 October 2016
Over the last few years, the Ministry of Justice has sought to fill the gap in its funding through repeated increases to court fees.
Pretty fly for wi-fi (Brands & IP Newsnotes - issue 3)23 October 2016
Those who provide access to free wi-fi networks will be breathing a sigh of relief after the CJEU’s judgment this September that providers of such networks can benefit from protection under the E-Commerce Directive.
Hyperlinks – the saga continues (Brands & IP Newsnotes - issue 3)23 October 2016
The CJEU has issued another judgment on copyright infringement and hyperlinking; this time in relation to linking to unauthorised content.
And finally...Brexit (Brands & IP Newsnotes - issue 3)23 October 2016
Speculation about Brexit’s impact on intellectual property rights caused the UKIPO to release its guidance note “IP and Brexit: The Facts” in August.