18 July 2016Trademarks

WIPR survey: Readers back CJEU marketplace ruling

WIPR readers have backed a decision by Europe’s highest court which said that operators of physical marketplaces can be forced to tackle instances of trademark infringement.

Responding to WIPR’s most recent survey, 67% of respondents said they agreed with the Court of Justice of the European Union’s (CJEU) ruling.

In its July 7 judgment the CJEU said operators of marketplaces may be forced to bring trademark infringements committed by market traders to an end and take measures to prevent new infringements.

The case, Tommy Hilfiger Licensing and Others v Delta Center, stems from the Supreme Court of the Czech Republic (Nejvyšší soud), where it is pending.

Brand owners including Tommy Hilfiger discovered that various counterfeits were being sold at Pražská tržnice, a market in the Czech Republic’s capital city Prague.

The brands asked the Czech court to order Delta Center, a company that sub-lets spaces to market tenants, to stop renting sales areas to people who committed infringements.

The court sought clarification from the CJEU on whether it is possible to order the operator of a physical market to put an end to infringements committed by traders, as is the case with online marketplaces.

According to the CJEU, an operator that provides a service to third parties must be classified as an intermediary. The court said that whether the sales point is online or offline is irrelevant and conditions for an injunction against a physical intermediary should be identical to those handed out to online intermediaries.

One respondent told WIPR the ruling was “completely fair and just”.

“If an online marketplace has certain duties to take reasonable steps to ensure counterfeit goods are not sold online/are removed in an environment where monitoring and control is so difficult, surely the same burden should be placed on physical markets, where it is arguably easier to both identify and tackle infringements?”

Another added: “A responsible market operator should want their site to be clean of counterfeits. It is reasonable that where clear evidence of the sale of counterfeits is brought to their attention they should take action to ensure their removal. Repeat offenders should not be given a plot.”

One reader commented that it is “impossible” for rights owners to take action against individual stall holders.

“Operators make money from their operation so they have a responsibility to ensure it involves non-infringing activities,” the reader added.

For this week’s survey we ask: “Last week we reported that the British Phonographic Industry had criticised Google by branding the company a ‘piracy enabler’. Does Google need to do more to tackle copyright infringement?”

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