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EU: Intermediaries carry out no actions which create a link between their services and the mark - L’Oreal v. eBay C

Under Article 5(1)(a) of the EU Trademark Directive, the relevant use must occur in relation to goods or services which are identical to those for which the mark is registered.

This condition has been discussed in a few cases. In L’Oreal v. eBay C-324/09, the Court upheld previous findings that ‘use in relation to goods or services’ can include the goods or services of another on whose behalf a third party is acting. This had previously been established in UDV North America (para 43 – 51) and in Google France v. Louis Vuitton (para 60).

In the L’Oreal v. eBay case, L’Oreal brought proceedings against eBay and some of its users for infringement of its trade mark rights. The claimants alleged firstly that these rights had been infringed by the sale of counterfeit cosmetic products on eBay’s online marketplace and, secondly, by virtue of eBay’s use of their marks in keyword advertising services. On the second point, eBay had used advertising services such as those in issue in the above Google France case to purchase keywords corresponding to L’Oreal trademarks. This had the effect of directing users towards goods infringing those marks on the eBay marketplace. eBay was therefore found to have used the trade marks in order to advertise its own services. The Advocate General remarked that “it is undeniable that that service is not identical with the goods covered by L’Oreal’s trade marks”. Despite this, it was found that (Para 100 AG Opinion; Paras 91 and 92 ECJ):

 “a third party can use the trade mark to distinguish between the goods of the trade mark proprietor and other goods that may or may not be his own goods.”

This finding was followed by the Court who stated:

“the words ‘in relation to goods or services’ do not relate solely to the goods or services of a third party which is using signs corresponding to the trade marks but may also refer to the goods or services of other persons

With regard, specifically, to a situation in which the supplier of a service uses a sign corresponding to the trade mark of another person in order to promote goods which one of its customers is marketing with the assistance of that service, the Court considers such a use to fall within the scope of Article 5(1) of Directive 89/104 and Article 9(1) of Regulation No 40/94, where the use is such that a link is established between the sign and the service (see the order in UDV North America, paragraph 47 and the case-law cited).” ( Para 90-92)

Essentially, use ‘in relation to goods or services’ can occur where the third party uses the sign in relation to the goods or services of another, such that a link is created between the third party’s services and the sign. On the facts, eBay’s advertisements had created an obvious association between the trade marks used and the goods which could be purchased on their online marketplace. Those goods were identical to those for which the mark was registered, and therefore this condition was fulfilled.

Subsequently, in Red Bull v. Frisdranken, discussed before, the Court applied these comments in the context of a service provider filling cans on behalf of a third party. As in L’Oreal, the Court noted that the service of the Defendants was the filling of cans, which was not similar to the products for which Red Bull had registered their marks. The Court then recognised the above principles but distinguished the situation of the defendants from that of L’Oreal. They stated:

“… the filling of cans bearing signs similar to trade marks is not, by its very nature, comparable to a service aimed at promoting the marketing of goods bearing those signs and does not imply, inter alia, the creation of a link between the signs and the filling service. The undertaking which carries out the filling is not apparent to the consumer, which excludes any association between its services and those signs.”  (para 33)