As a trade mark attorney with over a decade of experience defending brands online, I’m finding myself intrigued by the recent lawsuit filed by Dr. Martens against Alibaba;
The case, brought before the High Court of Justice in London, surrounds the alleged unauthorized use of Dr. Martens’ trade marks on the Aliexpress platform and in sponsored search results.
Dr. Martens claims that its trade marks were used without its permission, leading to potential consumer confusion and benefiting third-party sellers. Alibaba has responded by denying any direct involvement in the creation of these ads. They argue that Aliexpress merely serves as a marketplace for third-party sellers and that they have an “IP Protection Platform” to address such issues. Alibaba also contends that the search results in question are generated by Google’s automated algorithms, not by their actions, and therefore they have not “used” the marks in question. Dr. Martens ultimately seeks an injunction and damages.
The case highlights that it is essential for e-commerce platforms to respect trade marks in order to safeguard both iconic brands and consumers while also recognizing the difficulties of managing third-party content; and brings to mind the European Court of Justice’s rulings in similar cases. In Google vs. Louis Vuitton (CJEU C-237/08 to C-238/08), the Court noted that in order to be exempted from liability …the role played by that service provider must be neutral, in the sense that its conduct is merely technical, automatic and passive, pointing to a lack of knowledge or control of the data which it stores…” However, in L’Oréal vs. eBay (CJEU C-324/09), the Court stated that “…The operator nonetheless cannot rely on the exemption of liability if it was aware of facts and circumstances… should have realized that the offers were unlawful… and failed to act expeditiously…”
These precedents highlight the fine line between neutrality and liability for online platforms; and for both the platforms, and brands, emphasize the need for vigilance and taking proactive steps to prevent trade mark infringement.
It’s great that brands are more and more frequently holding e-commerce sites accountable for infringements committed by sellers. However, brand owners need to acknowledge that the EU legislature has specifically ruled out liability for third-party infringements, up until the point the e-commerce sites are actually informed about the infringements taking place. After that, the e-commerce site is exposed to liability.
Translating that into practical steps?
- Major brands ought to regularly surveil e-commerce sites for infringements (which doesn’t have to be expensive).
- They need to ensure that infringements are addressed promptly.
- Brands should put e-commerce sites on notice of those infringements, and follow up by requiring that they remove known infringers as well as set up specific countermeasures to avoid future infringements of the same kind.
As stated in L’Oréal vs. eBay (CJEU C-324/09), “…The [EU] Member States must ensure that national courts are able to order an online marketplace to take measures which contribute to bringing to an end specific infringements, and to prevent further infringements of that kind. Those injunctions must be effective, proportionate, dissuasive and must not create barriers to legitimate trade…”
For me, personally – seeing that Dr. Martens is (a) seeking out an injunction in a country that would arguably be one of the most expensive places in the World to litigate, and (b) seeing we are well past Brexit, and therefore the UK will expect to mature it’s own legal precedents – it will be exciting to see the potential “effective, preemptive and dissuasive” nature and wording of the High Court’s decision, if an injunction was to ultimately be imposed in the UK – especially the Court’s position on costs!
Will the High Court – if infringement is found – lean towards granting a comparably wide “general injunction” to also prevent future infringements and impose Alibaba to pay as much as 90 percent of Dr. Martens’ legal costs, as was decided pre-Brexit in LUSH vs AMAZON [2014] EWHC 1316 (Ch)?
Having seen quite a few “whack-a-mole-injunctions” in other jurisdictions, such as in Germany, where injunctions sometimes seem too specific to also be dissuasive, reducing their effect against future infringements, I have my fingers crossed that fair and clear justice will be served!