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Plus ca change! Victory for eBay in new counterfeit battle
After a four year battle, a US judge yesterday ruled that eBay should not be held liable for the sale of counterfeit jewellery through its site, following an unsuccessful claim by Tiffany & Co.
The judge decided that, under current US trademark law, eBay's actions did not constitute contributory trademark infringement. Specifically, Tiffany did not demonstrate that eBay knowingly permitted counterfeiters to carry out transactions on its site, even after it knew they were infringing Tiffany's trademark. The decision comes less than a fortnight after a French court ordered eBay to pay about £31.6m to LVMH, on the grounds that it had not taken sufficient steps to prevent the same of counterfeit goods.
Conversely, the US court's view is that Tiffany & Co is ultimately responsible for policing, and enforcing its own trademarks.
Katie Withers, IP lawyer of Eversheds LLP, comments: “eBay won the case, at least in part, because it was able to show that measures were in place to prevent the sale of counterfeits, and that it took steps to remove goods from sale once it became aware that they were infringing. This is likely to be of limited comfort to luxury brand owners because it places the onus largely on them to monitor suspicious transactions.”
An adverse ruling would have been a serious threat to eBay's business model, however. Katie continues: “Had the US decision gone against eBay, the consequences for its business model - and for all online trading - would have been dramatic. A requirement that eBay,for example, verified each article sold would have been impractical and couldhave forced the online auction site to cease selling certain branded goods.
“Historically, the attitude of the French courts, particularly in relation to the onlineuse of luxury brands, has been pro-brand owner so the decision is perhaps unsurprising. It is not yet clear whether Tiffany & Co intends to appeal the US decision, although an appeal by eBay in France is expected.”
Tagged as: eversheds | katie withers | ip | brand
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