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Weston’s trademark infringement , unfair competition and trademark infringement claims against eBay, whether for search engine sponsored links or the appearance of sponsored results on the site eBay from its referencing program, were all rejected by the 3rd chamber of the TGI of Paris, in its judgment of June 26, 2012. The court thus relied on Community case law and granted eBay the benefit of the liability regime hosts.
The luxury shoe manufacturer criticized the online marketplace for using its brand in advertisements to promote its services and for reserving it as a keyword with search engines. The ad that included the Weston brand referred to ebay.fr, whose operator eBay AG is considered here as the advertiser. The TGI considered that it had not harmed the function of identification of the mark, which makes it possible to guarantee the identity of origin of the products. The action for infringement is therefore unfounded. It takes into account the maturity of Internet users in the knowledge of the functioning of the Internet. He recalls that they are very familiar with eBay and know full well that it is a platform for individuals to buy and sell products such as Weston shoes.
The court also rejected the argument of infringement of the well-known mark, relying in particular on the judgment of September 22, 2011 of the CJEU in the Interflora case. For the court, the appearance of the name Weston as a keyword for displaying advertisements on search engines offering second-hand shoes is a matter of healthy and fair competition in the sector of the sale of shoes. Consequently, eBay acted for a “just cause” within the meaning of article L 713-5 of the intellectual property code.
The judges also considered that eBay had not committed acts of unfair competition by using the brand in the disputed advertisements. According to them, they do not constitute misleading advertisements capable of substantially altering the economic behavior of the consumer. The latter knows how to identify the advertiser and is informed about the qualities of the product sold. If the ads do not indicate that these are second-hand products, the Internet user is aware that eBay is not part of Weston’s distribution network. He is therefore not misled.
Ebay offered until 2010 a paid referencing service on which you could reserve keywords in order to generate the appearance of commercial links on ebay.fr. He is thus accused of broadcasting advertisements featuring the Weston brand for the sale of Vans or Dr Martens shoes. Relying on the Google / Louis Vuitton judgment of the CJEU of March 23, 2010, the court considers that eBay benefits from the host liability regime because Weston does not establish that the marketplace played an active role such as to entrust him with knowledge or control of the stored data. Moreover, he considers that eBay has not committed acts of trademark infringement by imitation because it does not use them in business life.
Grégory Damy , nice lawyer Intellectual property law