L’Oreal v Ebay [2011] C-324/09

• Defendant (Ebay) purchased various keywords on Google AdWords which were identical to trade marks owned by C (L’Oreal) over its perfumes.

• Claimant alleged that Defendant had infringed Claimant’s trade marks, by:

  1. Advertising the unauthorised offers for sale via keywords; and

  2. Allowing the sales to go ahead on its website at all.

• Held:

Keywords

• Fact that Defendant is using keywords to advertise someone else’s goods (and not his own) does not stop use falling under Article 5(1)

• In present case:

  1. Defendant’s use of mark to advertise its own service of providing a marketplace does not fall under Article 5(1)

     • I.e. as the provision of a marketplace is not an ‘identical or similar’ good or service

  2. However Defendant’s use of mark to advertise goods which Defendant’s customers are selling on its marketplace falls under Article 5(1).

• Thus in latter case, is infringement if advert falls foul of one of two conditions in Google France / Portakabin

Display of Goods on Website

1. Merely allowing customers to display trade marks on the marketplace is not a ‘use’ of trade mark for purposes of Article 5(1)

   • I.e. identical/similar goods

2. However this conclusion does not rule out possibility that operator of marketplace may be liable under Article 5(2)

   • I.e. unfair advantage/detrimental to distinctive reputation

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