EU: Are market operators liable for trademark infringements by providers?

With its judgement of 07/07/2016 (Ref. C-494/15), the European Court of Justice (ECJ) applied its case law on trademark infringements for online market places to physical market places. The result of this is that, for instance, in the case of trademark infringements by exhibitors, event organisers must take measures to stop this and to prevent the same infringements from being made again in the future.

To start with, the ECJ makes it clear that the relevant provision of Art. 11 Sentence 3 of Directive 2004/48/EC, dealing with the protection of intellectual property, is to be understood in a way that an intermediary – irrespective of its own responsibility – can be obligated to take measures that stop a trademark infringement and prevent further infringements.

An intermediary here is an economic actor who offers a service that third parties use to infringe intellectual property rights. According to the ECJ, this also applies to lessors of stalls if the lessees offer counterfeits of proprietary articles. In this regard, the lessors of stalls are no different from the operators of online marketplaces.

According to the same principles that were established for the operators of online market-places in the L’Oréal decision (ECJ, Ref. C-324/09), the lessors have no general or contin-uous monitoring obligation. If there is knowledge of trademark infringements, however, the intermediary can be obligated to take applicable measures. This also concerns measures that prevent repeat infringements of the same type by the same trader.

The decision is hardly surprising. It is interesting, however, that in the present case with the L´Oréal decision, a judgement that concerned digital circumstances is expressly transferred to the analogue world.

It is clear from the judgement that trade fair organisers and other lessors of large areas can definitely be confronted with issues of trademark law without committing trademark in-fringements themselves. Under German law, the case would be resolved by the institute for so-called liability for interference. Under national law, there is also no permanent and un-conditional monitoring obligation for the intermediary. Providers of physical market halls therefore do not need to fear claims for illegal behaviour by their lessees without prior evidence.

If they acquire information about infringements, however – for instance from the owner of a trademark – they must take reasonable measures to stop this and to prevent future trade-mark infringements. Conversely, the owner of a trademark therefore has an additional op-portunity to act against trademark infringements. Precisely if an action against the direct violator does not appear practicable, it can be expedient to claim against the operator of the digital or analogue marketplace.

Eva Kessler
Sebastian Binder