Case Law

Question 1

C-236/08 Google France/Louis Vuitton

Answer 1

Established at trial that: (i) entering LV into G triggered display of ads for counterfeit goods and (ii) G offered advertisers LV + language that would make it clear goods were counterfeit.

Google was initially held liable for TM infringement.

The court of justice ruled that G had not infringed LV’s TM and that to do so requires at least use in one’s own commercial communication

Question 2

Frisdranken v Red Bull

Answer 2

SmartDrinks instructed Winters to fill cans with a soft drink. The cans were branded similarly to Red Bull.

Red Bull sued Winters for TM infringement, initially injunctions were granted for the Bullfighter, and later Pitbull and Live Wire marks.

The case was referredd to the CJEU asking whether the mere filling of packaging constitutes TM infringement.

Based on C-236/08-C-238/08 (Google) the court found that simply creating the technical conditions necessary for use of a sign and being paid for the service does not mean that the party offering the service itself uses the sign. The service of filling the cans is dissimilar to Red Bull’s product.

Red Bull raised concerns that if the court were to find that a TM proprietor could not act against a service provider, the customer of the SP may be able to circumvent TM production by dividing the production process between SPs. The court responded by saying that the customer remains liable under the TM directive.

Question 3

L’Oreal v Ebay

Answer 3

L’Oreal sued Ebay over traders selling L’Oreal products on Ebay without the consent of L’Oreal.

The Court held that the ISP itself (Ebay) does not in fact use those signs.

Question 4

Argos v Argos Systems [2018] EWCA Civ 2211

Answer 4

Consumer goods retailer Argos sued construction software retailer Argos systems, a US based company using Argos.com for TM infringement.

When consumers mistakenly went to Argos.com looking for the UK company, Argos Systems earnt revenue which Argos UK considered to be taking unfair advantage.

The only product sold by AS in the UK was electronic billbords. The Court of Appeal concluded that Argos Systems was targeting the UK through its electronic billboards for the following reasons:
Argos Systems was aware of the misdirected traffic arriving at its website;
the vast majority of this traffic came from the UK and Ireland; and
because of the way the Google algorithm works, it is very likely that these visitors would be shown ads of interest to them.

Ultimately, the advantage gained by AS was not found to be unfair although the ads were targeting UK consumers and there was a link