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Trademark protection on online platforms

posted 5 years ago

The protection of trademarks
on the internet is one of the most important tasks of trademark protection.
Many trademark infringers try to distribute their products through online platforms
such as Ebay, Amazon or Wish. Furthermore, infringers often aggressively
advertise their products on online search engines like Google or Yahoo, in
order to be high listed in the search results. In these cases it is often very
difficult to take action directly against the infringers and the trademark
owners intend to ask the online platforms to erase the infringing offers or

Even though such trademark infringements
on the internet have caused serious damages, many trademark owners do not have
a strategy to protect their trademarks from uses on the internet. Nevertheless,
the CJEU almost a decade ago dealt with the issue of trademark infringements on
the internet in several cases and it is therefore settled case law in which
cases the trademark owner is entitled to take action directly against the online
platforms or search engines. The CJEU decided in the Google France cases (C-236/08
to C-238/08, of 23 March 2010) that the proprietor of a trademark is entitled
to prohibit an advertiser from advertising in the case where that the advertisement
does not enable an average internet user to ascertain whether the goods or
services referred to therein originate from the proprietor of the trade mark or
an undertaking economically connected to it or, on the contrary, originate from
a third party. The CJEU further clarified in the Interflora case (C-323/09, 22
September 2011) that the proprietor of a trade mark is entitled to prevent a
competitor from advertising if the advertisement adversely affects the trademark’s
investment function. Therefore, according to the CJEU case law, the mere use of
a trademark as search keyword is usually not infringing. However, the trademark
owner may take action directly against the online platform when the offer or
advertisement explicitly refers to the protected trademark.

The search engines and
online platforms, in order to comply with the case law, provide Trademark
Protection Systems. These Trademark Protection Systems provide protection for several
infringing uses of the trademark, especially the use of the trademark in the
description of the offer or the use of the trademark for counterfeit goods.
Online platforms and search engines do not provide protection against the use
of trademarks as search keyword, as long as the trademark is not shown in the
search result.

In order to protect a
trademark in the Protection Systems of the online platforms or search engines, the
trademark owners have to go through a registration process. In this registration
process, the trademark owner has to prove the existence of his trademark right.
After having completed the registration process, the trademark owner is
entitled to file specific complaints against infringing offers or
advertisements. Usually, most of the complaints are accepted within one working
day. The registration of trademark owners before the Trademark Protection
Systems of online platforms and search engines is therefore a very quick,
efficient and low cost way to stop the most infringements which are taking place
on the internet.  


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