03/02/2020 CURIA - Documents L’Oréal’s action before the High Court of Justice sought a ruling, first, that eBay and the individual defendants are liable for sales of 17 items made by those individuals through the website www.ebay.co.uk, L’Oréal claiming that those sales infringed the rights conferred on it by, inter alia, the figurative Community trade mark including the words ‘Amor Amor’ and the national word mark ‘Lancôme’. It is common ground between L’Oréal and eBay that two of those 17 items are counterfeits of goods bearing L’Oréal trade marks. Although L’Oréal does not claim that the other 15 items are counterfeits, it none the less considers that the sale of the items infringed its trade mark rights, since those items were either goods that were not intended for sale (such as tester or dramming products) or goods bearing L’Oréal trade marks intended for sale in North America and not in the European Economic Area (‘EEA’). Furthermore, some of the items were sold without packaging. Whilst refraining from ruling at this stage on the question as to the extent to which L’Oréal’s trade mark rights have been infringed, the High Court of Justice has confirmed that the individual defendants made the sales described by L’Oréal on the website www.ebay.co.uk. Second, L’Oréal submits that eBay is liable for the use of L’Oréal trade marks where those marks are displayed on eBay’s website and where sponsored links triggered by the use of keywords corresponding to the trade marks are displayed on the websites of search engine operators, such as Google. Concerning the last point, it is not disputed that eBay, by choosing keywords corresponding to L’Oréal trade marks in Google’s ‘Ad Words’ referencing service, caused to be displayed, each time that there was a match between a keyword and the word entered in Google’s search engine by an internet user, a sponsored link to the site www.ebay.co.uk. That link would appear in the ‘sponsored links’ section displayed on either the right-hand side, or on the upper part, of the screen displayed by Google. Thus, on 27 March 2007, when an internet user entered the words ‘shu uemura’ – which in essence coincide with L’Oréal’s national word mark ‘Shu Uemura’ – as a search string in the Google search engine, the following eBay advertisement was displayed in the ‘sponsored links’ section: ‘Shu Uemura Great deals on Shu uemura Shop on eBay and Save! www.ebay.co.uk’. Clicking on that sponsored link led to a page on the www.ebay.co.uk website which showed ‘96 items found for shu uemura’. Most of those items were expressly stated to be from Hong Kong. Similarly, taking one of the other examples, when, on 27 March 2007, an internet user entered the words ‘matrix hair’, which correspond in part to L’Oréal’s national word mark ‘Matrix’, as a search string in the Google search engine, the following eBay listing was displayed as a ‘sponsored link’: ‘Matrix hair Fantastic low prices here Feed your passion on eBay.co.uk! www.ebay.co.uk’. Third, L’Oréal has claimed that, even if eBay was not liable for the infringements of its trade mark rights, it should be granted an injunction against eBay by virtue of Article 11 of Directive 2004/48. L’Oréal reached a settlement with some of the individual defendants (Mr Potts, Ms Ratchford, Ms Ormsby, Mr Clarke and Ms Clarke) and obtained judgment in default against the others (Mr Fox and Ms Bi). Subsequently, in March 2009, a hearing dealing with the action against eBay was held before the High Court of Justice. By judgment of 22 May 2009, the High Court of Justice made a number of findings of fact and concluded that the state of the proceedings did not permit final judgment in the case, as a number of questions of law first required an interpretation from the Court of Justice of the European Union. In its judgment, the High Court of Justice notes that eBay has installed filters in order to detect listings which might contravene the conditions of use of the site. That court also notes that eBay has developed, using a programme called ‘VeRO’ (Verified Rights Owner), a notice and take-down system that is intended to provide intellectual property owners with assistance in removing infringing listings from the marketplace. L’Oréal has declined to participate in the VeRO programme, contending that the programme is unsatisfactory. The High Court of Justice has also stated that eBay applies sanctions, such as the temporary – or even permanent – suspension of sellers who have contravened the conditions of use of the online marketplace. Despite the findings set out above, the High Court of Justice took the view that eBay could do more to reduce the number of sales on its online marketplace which infringe intellectual property rights. According to that court, eBay could use additional filters. It could also include in its rules a prohibition on selling, without the consent of the trade mark proprietors, trade-marked goods originating from outside the EEA. It could also impose additional restrictions on the volumes of products that can be listed at any one time and apply sanctions more rigorously. The High Court of Justice states, however, that the fact that it would be possible for eBay to do more does not necessarily mean that it is legally obliged to do so. By decision of 16 July 2009, which follows on from the judgment of 22 May 2009, the High Court of Justice decided to stay the proceedings and refer the following questions to the Court for a preliminary ruling: Where perfume and cosmetic testers (i.e. samples for use in demonstrating products to consumers in retail outlets) and dramming bottles (i.e. containers from which small aliquots can be taken for supply to consumers as free samples) which are not intended for sale to consumers (and are often marked “not for sale” or “not for individual sale”) are supplied without charge to the trade mark proprietor’s authorised distributors, are such goods “put on the market” within the meaning of Article 7(1) of [Directive 89/104] and Article 13(1) of [Regulation No 40/94]? Where the boxes (or other outer packaging) have been removed from perfumes and cosmetics without the consent of the trade mark proprietor, does this constitute a “legitimate reason” for the trade mark proprietor to curia.europa.eu/juris/document/document.jsf?text=&docid=107261&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=1392992 5/15