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Bundesgerichtshof: Trade mark infringement and Internet auction platforms
In a decision of 30 April 2008, the German Federal Supreme Court (Bundesgerichtshof) has confirmed its earlier jurisprudence and decided that it is possible to apply for an injunction directly against an Internet auction house, which hosts a platform where vendors are offering counterfeit and trade mark infringing goods. The Bundesgerichtshof has published a press release in connection with this case, which is summarised and translated (unofficial translation) below. The decision is not yet available in its entirety.
The claimant in the case produces and distributes luxury watches under the trade mark ROLEX. Third party vendors had offered counterfeit watches, which were clearly marked as “fake ROLEX watches” on the defendant’s internet auction platform “Ricardo”. The claimant applied for an injunction against the Internet auction house. The Higher Regional Court of Cologne had allowed the claim and this decision has now been confirmed by the Bundesgerichtshof, Germany’s highest court in civil law matters.
The Bundesgerichtshof ruled that the defence ("Haftungsprivileg") for host providers under the German Telemediengesetz (Telemedialaw) only applied to the responsibility under criminal law and the liability for damages but did not apply to claims for an injunction for a discontinuance (of a trade mark infringing act). The Internet auction house's liability stemmed from the fact that it had made the offer of the trade mark infringing products possible in the first place, even though it was not selling the products itself. The Court explained that it was a prerequisite of such a liability (“Störerhaftung”) that the third party vendors had offered the counterfeit goods in the course of trade (“im geschäftlichen Verkehr”) because this qualified it as trade mark infringement. The Court ruled that after being notified of an “obvious trade mark infringement” by the claimant, the defendant had not only had the duty to immediately block the infringing offer, but the defendant should have also taken the necessary precautions to avoid further infringing acts on its website. The Court emphasized that is did not ask for an unacceptable amount of policing because this "would question the whole business model" of internet auctioning. At the same time, the Bundesgerichtshof stressed that is was the defendant’s legal duty to take all possible technical precautions to prevent trade mark infringing offers on its platform. In this particular case the goods had been clearly marked as “fake ROLEX watches” and the defendant had already been notified by the claimant about similar infringing acts in the past. The Court decided that the defendant therefore should have had adequate control measures in place, which would have allowed better monitoring of the website for further infringements of the claimant’s trade mark. As this issue had been the subject of previous law suits between the parties, the defendant had clearly failed its legal duties and it was therefore possible for the claimant to apply for an injunction directly against the Internet auction house itself.
Case reference: Bundesgerichtshof, I. Zivilsenat, I ZR 73/05 – Internet-Versteigerung III of 30 April 2008.
The Court's press release (No. 87/2008) can be retrieved by clicking here (in German).
Class 46 comment: This decision further clarifies the duties of Internet auctions houses to monitor their websites for counterfeit goods and as such strengthens the rights of trade mark owners considerably.
Tags: Bundesgerichtshof, German trade marks, internet auctions, trade mark infringement,



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