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EU: secondary liability only if the relevant use is “in the context of commercial activity with a view to economic advantage and not as a private matter” (Arsenal Football Club v. Matthew Reed)

One key feature of an Intermediary’s activity is that he may be acting in the course of trade, but NOT be using the signs in a sense relevant to a trademark infringement action. One example is a freight forwarder that provides freight forwarding services for his own economic gain. This does not mean, however, that he is using the trade marks on the goods that he is transporting in that course of that trade, or at all. All relevant principles on ‘use in the course of trade’ must be cumulatively applied in order to determine whether an alleged trademark infringer is in fact liable.

The requirement that the defendant be acting in the course of trade has also been consistently applied by European courts. ECJ in Arsenal Football Club v. Matthew Reed elaborated upon this requirement, holding that the relevant use must occur “in the context of commercial activity with a view to economic advantage and not as a private matter”.

https://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX%3A62001CJ0206

https://en.wikipedia.org/wiki/Arsenal_Football_Club_vs._Matthew_Reed

This has been applied in subsequent ECJ case law.

In Google France v Louis Vuitton (para 55), for example, Google was plainly found to be acting in the course of trade whilst storing signs as keywords for clients and arranging for ads to be displayed when those keywords were purchased by advertisers. This alone did not amount to infringement, however, as although Google was acting in the course of trade they were not ‘using’ the marks in the sense contemplated by the Directive.