The Bundesgerichtshof (German Supreme Court) rendered another judgment, in which it pursued its jurisdiction on the liability of providers of online marketplaces.
On the internet platform eBay, products under the trademark "Echo Davidoff" and "Davidoff Cool Water Deep" (so-called perfume pens) were offered for auction by one of the sellers. On its platform eBay provides for a so-called VeRi-program by which owners of intellectual property rights can object to right infringing offers and gain the blocking of the seller's offer by providing an affidavit. Thereafter eBay provides for the opportunity for the owner of the intellectual property right to scan the seller's data through the VeRi-program.

The owner of the trademark informed eBay via a letter sent by its attorney that the owner of the trademark does not produce perfume pens with a filling quantity of 20ml and that those are therefore obviously fakes. She called on eBay to remove the objected offers and to inform the owner of the trademark of the seller's name and address and to provide a declaration to cease and desist. The objected offers were indeed removed by eBay. However the declaration to cease and desist was not provided for, whereupon the owner of the intellectual property right filed a restraint order against eBay in front of the German courts.

The court of appeal was of the opinion that the plaintiff had not put eBay into a situation, in which eBay could have fulfilled its examination obligation, since the plaintiff had not provided evidence for the trademark pleaded by it and also had not used the possibility of submitting an affidavit on the actual circumstances of the violation of the trademark, which is why the plaintiff had not been entitled to the right to forbearance or information. The Bundesgerichtshof came to the same conclusion but with a different and preferable line of argumentation: The Bundesgerichtshof came to the result that the risk of another infringement by the provider of the internet platform eBay is missing. However the Bundesgerichtshof saw the provider's quality as potential violator of trademark rights, but was weighing between the level of reasonableness for preventing infringement of third party rights (acting person acts on a non-profit base in public interest versus acting person acts for its own profit maximization purposes) and the question, whether the violation of rights was evident for the third party or if it could have seen the infringement easily.
From this consideration, the Bundesgerichtshof concluded that the provider of an internet trading platform must block a specified offer at least after having received information on a clear violation of rights and furthermore has to take care that there will be no further such trademark infringements. However a general examination obligation with respect to each offer placed on the platform was denied by the Bundesgerichtshof. Only the information on the violation of rights leads to the necessity of taking actions by the provider of the internet trading platform, who is in general not obliged to undertake preventative measures of control. After having received the information on the violation of rights, the provider has to locate the objected sales offer and block it.
The content of such an information depends on each individual case and on the degree of violation of rights as well as the provider's potential insights. Providing that the infringement involves an infringement of a trademark, an extensive statement on a possibly existing risk of the violation of trademark rights is not necessary, but only the use of a sign identical to the trademark on a product, which is identical to the product for which a trademark protection consists. Providing evidences shall only be required if defendant's interest justifies such, i.e. if reasons are given to doubt the circumstances as provided by the plaintiff.

The Bundesgerichtshof could not identify a risk of repetition, which is why it did not come to the conclusion that a right to forbearance and information was given.
As the providers of internet trading platforms are in general not obliged to check each sales offer in advance for possible violation of rights, the risk of infringement is only created after an information on a corresponding violation of rights has been provided by the owner of the trademark. After the relevant information was received by the provider of the internet trading platform, he had blocked the corresponding sales offers and since then no further sales offers appeared under the trademark "Echo Davidoff" or "Davidoff Cool Water Deep" in a manner corresponding the objection.

Due to the exception allowed by the Bundesgerichtshof in its judgment, whereupon evidence must be furnished, if the person being accused by the owner of the trademark expresses doubts with regard to entitlement to assert trademark rights or the existence of trademark rights, it is nevertheless recommended to attach appropriate evidence for the violation of trademark rights already to the first warning letter.
Since the Bundesgerichtshof does not see a risk of repetition in such cases, only a claim for removal and blocking of corresponding sales offers is given, after having made the provider of the internet trading platform aware of the violation of intellectual property rights. A further right to forbearance and information is not given.

Contact person: Vanessa Lichter, Esq., This e-mail address is being protected from spambots. You need JavaScript enabled to view it