On July 8th, 2016 the Court of Justice of the European Union published good news for trademark holders. It was a ruling in a case initiated by React (http://www.react.org/) an anti-counterfeiting network, against the operator of a covered market in Prague who failed to take steps to prevent the sale of fake products imitating brands such as Tommy Hilfiger, G-Star, Lacoste and Burberry.
After the L’Oreal/eBay case of 2011, where the Court ruled that operators of online marketplaces are intermediaries “whose services are used by a third party to infringe an intellectual property right,” the Court now confirmed that the same principal applies to operators of “brick and mortar” marketplaces (e.g. shopping malls, green markets). This means that trademark holders can now expect marketplace operators to help stop trademark infringing products from being sold on their premises.
The Court further clarified that legal injunctions against intermediaries (e.g., marketplace operators) must be reasonable and proportionate. The intermediary cannot be required to exercise general and permanent oversight over its customers. However, they can be required to take action to prevent new infringements by vendors who have a track record of selling fake products.Category: Member News