The Community Trade Mark (CTM) Regulation (40/94/EC, now replaced by 207/2009) contains the following provisions, which are also set out in the Trade Marks Directive (89/104/EEC) in relation to national trade marks:

Article 9(1)(a) provides that a CTM proprietor is entitled to prevent third parties from using, without his consent and in the course of trade:

Article 12(1)(a) sets out limitations on the effect of CTMs, and provides, among other things, that a CTM proprietor cannot prevent third parties from using, in the course of trade, indications concerning characteristics of goods or services such as their quality or intended purpose, provided they do so in accordance with honest practices in individual or commercial matters.

Article 13(1) provides that a CTM shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent. However, this shall not apply if there are legitimate reasons for the proprietor to oppose further commercialisation of the goods, especially where the condition of the goods is changed or impaired after they have been put on the market (Article 13(2)).

Article 6(1) of Directive 76/768 on cosmetic products (Cosmetics Directive) requires certain information, such as the manufacturer's name, a "best before" date and a list of ingredients, to be included on the packaging of cosmetic products.

Article 3 of European Parliament and Council Directive 2004/48 of 29 April 2004 on the enforcement of intellectual property (IP) rights (Enforcement Directive) obliges EU member states to provide for the measures, procedures and remedies necessary to ensure the enforcement of IP rights (Article 3(1)). These should be effective, proportionate and dissuasive and applied in such a manner as to avoid the creation of barriers to legitimate trade and to provide for safeguards against their abuse (Article 3(2)).

Article 11 of the Enforcement Directive requires EU member states to ensure that, where a judicial decision is taken finding an infringement of an IP right, the judicial authorities can issue against the infringer an injunction aimed at prohibiting the continuation of the infringement. It also requires EU member states to ensure that rights-holders can apply for an injunction against intermediaries whose services are used by a third party to infringe an IP right.

Answer: it is enough to show that the offer is targeted at consumers in the trade mark territory.

The court noted that various defendants to the English proceedings had sold, via eBay, L'Oréal branded goods which L'Oréal had intended should be sold outside the EU, as well as some goods (such as testers and dramming items) that it never intended should be sold at all. Some of these had been sold with packaging, and some without.

The ECJ said that there was a distinction to be made between private sellers and commercial sellers. If an individual sold an item via eBay, the sale was not in the course of trade and could not constitute trade mark infringement. The question of whether a sale was private or commercial would depend on various factors such as the volume and frequency of sales. The English High Court had found on the facts that the defendants were selling commercially.

The ECJ observed that the goods concerned in the English proceedings had not been put on the market within the EEA by L'Oréal or with its consent. eBay's argument had been that the offer for sale on eBay had not necessarily meant importation of the goods into the EEA, as they could equally be bought by someone located outside the EEA. However, the court preferred L'Oréal's argument that infringement occurred as soon as the offer for sale of a trade marked product situated outside the EEA was targeted at consumers within a territory where trade mark rights subsisted.

The court said that this had to be the right way of looking at this question, as otherwise website marketplace operators could with impunity aim advertisements at consumers in territories where the goods in question enjoyed trade mark protection, and there would be no redress against them when the goods were imported there from outside the EEA in infringement of those marks. That consequence would render the whole EU system of trade mark protection ineffective in that regard.

However, the mere fact that the website was accessible from a territory where there were trade mark rights would not necessarily mean that the offer in question was targeted at consumers there. The national court would have to take into account the context of the offer: for example, is the territory included in a list of countries to which the seller is willing to send the goods?

Answer: no.

The court noted the English High Court's finding that L'Oréal had clearly indicated to its authorised distributors that they could not sell the demonstration items and sample bottles, and that these were often marked "not for sale". It then referred to its judgment in Silberquelle (Case C-495/07; see Legal update, ECJ rules on whether use of trade mark on free promotional goods constitutes genuine use) in which it had ruled that where items were supplied free of charge as a way of promoting the sale of goods, they could not normally be regarded as having been put on the market by the trade mark proprietor. It also cited Coty Prestige Lancaster Group v Simex Trading, which had similar facts (see Legal update, ECJ rules trade mark rights not exhausted by perfume testers) as authority for holding that when a trade mark proprietor marked items such as testers with the words "demonstration" or "not for sale", this meant that on the face of it the proprietor had not given implied consent to those items being put on the market.

Answer: it depends on the facts.

The question of whether the removal of packaging harmed the image of cosmetics had to be decided on a case-by-case basis. The Advocate General had pointed out in his opinion on this question that there might be cases where removal of packaging did not affect the image of the product (for example, where the products were inexpensive rather than luxury brands). On the other hand, damage might well occur if the packaging was an essential part of the product's image.

Answer: it depends whether such behaviour damages the image of the trade mark.

If legally required information was removed from packaging, such as the identity of the manufacturer or marketer of the product, this would impair the trade mark's function of guaranteeing that the goods were supplied under the control of a single undertaking which was responsible for their quality. The issue of whether a criminal offence was being committed or not was irrelevant to the applicability of EU rules on trade mark infringement.

Answer: the trade mark proprietor can oppose further commercialisation if such damage occurs, or is likely to occur, but would have to establish such damage.

Answer: yes, but only under Article 9(1)(c) of the CTM Regulation.

In the Google France case (see Legal update, ECJ ruling in Google France AdWords case), the ECJ had ruled that use of a keyword to trigger the display of an advertisement constituted use "in the course of trade" within the meaning of the CTM Regulation.

As to whether such use was "in relation to" goods or services, the court noted that eBay's use of the keywords to promote its own online-marketplace services was not use in relation to goods or services that were identical with, or similar to, those for which L'Oréal's marks were registered. The court had therefore to look to Article 9(1)(c) of the CTM Regulation, which prohibited use in relation to goods or services that were not similar to those for which the marks with a reputation were registered. The scope of Article 9(1)(c) extended to goods and services offered by the person who was using the keywords, but also to the goods and services of other persons as well, provided that a link was established between the keyword and the service.

In the case of eBay, it extended to the sellers that were using eBay's marketplace services, since eBay's advertisements created an obvious association between L'Oréal's branded goods (mentioned in the advertisements) and the possibility of buying them through eBay.

Answer: only if the true source of the goods is not made clear.

The court said that the use would be "in relation" to the goods in question if the advertisement contained in the sponsored link did not enable the reasonably well-informed and observant user of the internet to ascertain (or made it difficult for them to ascertain) whether the advertised goods originated from the trade mark proprietor (or someone associated with it), or from an entirely different source. The court cited Bergspechte as authority (Case C-278-08; see Legal update, ECJ applies Google France ruling in Austrian keyword dispute).

Answer: in such circumstances, the operator has no liability as it is not "using" the signs for the purposes of trade mark law.

Citing Google France, the court said that although advertisements on eBay for the sale of branded goods displayed the offending signs, it was the seller who was "using" those signs, rather than the website operator. Any liability arising from the operator's facilitation of such use would have to be decided by reference to the E-commerce Directive.

Answer: yes, provided that the ISP has not played an active role allowing it to have knowledge or control of the advertisement and (in accordance with Article 14(1) of the E-commerce Directive) was unaware of facts or circumstances which should have made it realise that the advertisement was unlawful (or, if it was aware of such facts or circumstances, it acted expeditiously to remedy the situation).

It was for national courts to determine questions of liability in the circumstances of each case. However, as to whether eBay and other marketplace operators were protected by Article 14(1), it had to be an intermediary provider. A service provider would not be an intermediary provider if it played an active role so as to give it knowledge of, or control over, the data it stored, rather than confining itself to technical and automatic processing of the data. It was clear in eBay's case that it processed its customers' data: the offers for sale were made in accordance with eBay's terms and conditions, and eBay sometimes helped its customers to optimise or promote their advertisements.

An online marketplace operator would not be deprived of the exemption merely because it stored offers for sale on its server, set terms of service, was paid for that service and provided general information to its customers (as per Google France). However, if the operator helped its customers in other ways - particularly by promoting, or optimising the presentation of, its customers' advertisements - it was not taking a neutral position as between its customers and potential buyers of the goods. It had taken an active role which gave it knowledge of, or control over, the data relating to those offers for sale. This took it outside the Article 14(1) exemption.

Even if the operator did not take an active role in this way, it might still have the necessary awareness to deprive it of the exemption, as set out in Article 14(1). Where knowledge was to be imputed to the operator, the test would be whether a diligent economic operator should have identified the illegality in question. The requisite knowledge might arise, for example, as the result of an investigation undertaken by the operator on its own initiative, as well as where it was responding to an allegation of infringement. Such notification would not automatically take the operator outside the protection of Article 14(1), but would be taken into account by the national court when determining the state of the operator's awareness.

Answer: yes, provided that the injunction is effective, proportionate, dissuasive and does not create barriers to legitimate trade.

The court considered first whether injunctions issued under Article 11 of the Enforcement Directive had to relate to specific and clearly identified acts of infringement, or whether they could be aimed in a more general way at preventing future infringement.

It was clear that injunctions against infringers themselves, as envisaged in the first part of Article 11, could relate to future infringements. However, the position as it related to intermediaries was less clear. Injunctions against such intermediaries could not be equated with the injunctions against infringers which were "aimed at prohibiting the continuation of the infringement".

The purpose of the Enforcement Directive was to ensure effective protection of IP rights in the information society. In order to achieve this, national courts had to have the power to order online service providers, such as marketplace operators, to take steps to prevent further infringement, as well as steps to bring ongoing infringements to an end. Article 18 of the E-commerce Directive supported this view, pointing the court away from a narrow interpretation of Article 11 of the Enforcement Directive. It was a view also supported by recital 24 to the Enforcement Directive which said that measures aimed at preventing further IP infringements must be provided for if the circumstances justified them.

The scope of injunctions against ISPs was a matter for national courts to decide. However, it was clear that the laws of member states had to be designed to achieve the objective of the Enforcement Directive. In particular, such laws should be "effective and dissuasive" as required by Article 3(2) of the Enforcement Directive.

As the UK had not adopted any specific rules of law to implement the provision of Article 11 relating to injunctions against intermediaries, its national court had to apply such national law as there was in accordance with that provision. In light of Article 15 of the E-commerce Directive and Article 2(3) of the Enforcement Directive, an ISP could not be required to actively monitor all the data of all of its customers. Furthermore, a general obligation to monitor would be incompatible with Article 3 of the Enforcement Directive, as it would be unfair, disproportionate and too costly. It was also clear from Article 3 of the Enforcement Directive that any injunctions that were issued must not create barriers to legitimate trade. This ruled out any injunction that purported to place a general and permanent prohibition on sales within the relevant online marketplace of goods bearing particular trade marks. However, an injunction ordering an ISP to suspend the account of an infringer might be warranted as a way of preventing further infringements of a specific kind by that seller in respect of particular trade marks. An online marketplace operator might also legitimately be ordered to take steps to make it easier to identify its sellers, provided that they were selling commercially rather than privately (in which case, such identification might be prevented by data protection considerations).