03/02/2020 CURIA - Documents eBay (UK) Ltd (hereinafter referred to collectively as ‘eBay’) as well as Mr Potts, Ms Ratchford, Ms Ormsby, Mr Clarke, Ms Clarke, Mr Fox and Ms Bi (hereinafter referred to collectively as ‘the individual defendants’), concerning the sale, without L’Oréal’s consent, of L’Oréal products on the online marketplace operated by eBay. I – Legal context A – Directive 89/104 and Regulation No 40/94 Directive 89/104 and Regulation No 40/94 were repealed by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) (OJ 2008 L 299, p.25), which entered into force on 28 November 2008, and Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (OJ 2009 L 78, p. 1), which entered into force on 13 April 2009. The dispute in the main proceedings none the less continues to be governed, account being taken of the material dates, by Directive 89/104 and Regulation No 40/94. Article 5 of Directive 89/104, entitled ‘Rights conferred by a trade mark’, was worded as follows: ‘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: 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; any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the 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 l and 2: affixing the sign to the goods or to the packaging thereof; offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder; importing or exporting the goods under the sign; using the sign on business papers and in advertising. …’ The wording of Article 9(1)(a) and (b) of Regulation No 40/94 corresponded in substance to that of Article 5(1) of Directive 89/104. Paragraph 2 of Article 9 corresponded to paragraph 3 of Article 5. As to Article 9(1)(c) of Regulation No 40/94, it provided: ‘A Community 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: … any sign which is identical with or similar to the Community trade mark in relation to goods or services which are not similar to those for which the Community trade mark is registered, where the latter has a reputation in the Community 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 Community trade mark’. Article 7 of Directive 89/104, entitled ‘Exhaustion of the rights conferred by a trade mark’, stated: ‘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 European Economic Area] 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 commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market.’ Under Article 13(1) of Regulation No 40/94, ‘[a] Community trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the [European Union] under that trade mark by the proprietor or with his consent’. The wording of Article 13(2) is identical to that of Article 7(2) of Directive 89/104. B – Directive 2000/31 (‘Directive on electronic commerce’) Article 2(a) of Directive 2000/31 defines ‘information society services’ by reference to Article 1(2) of Directive 98/34/EC of the European Parliament and of the Council of 22 June 1998 laying down a procedure for the provision of information in the field of technical standards and regulations and of rules on Information Society services (OJ 1998 L 204, p. 37), as amended by Directive 98/48/EC of 20 July 1998 (OJ 1998 L 217, p. 18) (‘Directive 98/34’), which refers to ‘any service normally provided for remuneration, at a distance, by electronic means and at the individual request of a recipient of services’. Article 1(2) of Directive 98/34 continues as follows: … ‘For the purposes of this definition: at a distance” means that the service is provided without the parties being simultaneously present, “by electronic means” means that the service is sent initially and received at its destination by means of electronic equipment for the processing … and storage of data, and entirely transmitted, conveyed and received by wire, by radio, by optical means or by other electromagnetic means, “at the individual request of a recipient of services” means that the service is provided through the transmission of data on individual request. …’ Article 6 of Directive 2000/31 states: curia.europa.eu/juris/document/document.jsf?text=&docid=107261&pageIndex=0&doclang=EN&mode=lst&dir=&occ=first&part=1&cid=1392992 2/15