Online issues at the ECJ


Anna Szajna and Maria Jurek

Since Poland’s accession to the EU, judgments of the Court of Justice of the European Union (ECJ) have been part of the Polish law and are applied directly with priority to national law. Anna Szajna and Maria Jurek take a look at the key cases.

Since Poland’s accession to the EU, judgments of the Court of Justice of the European Union (ECJ) have been part of the Polish law and are applied directly with priority to national law. Anna Szajna and Maria Jurek take a look at the key cases.

In 2010, there were many significant IP judgments, including GmbH v BBY Portakabin v Primakabin, and others, all relating to keyword advertising and the Internet.

In Google joint cases C-236/08 and C-238/08, the court ruled that:

  • An Internet referencing service provider that stores, as a keyword, a sign identical to a trademark and organises the display of advertisements on the basis of that keyword does not use that sign.
  • Article 14 of the Directive on Electronic Commerce must be interpreted so that its rules apply to an Internet referencing service provider in the case where that service provider has not played an active role of such a kind as to give it knowledge of, or control over, the data stored. 

    If it has not played such a role, that service provider cannot be held liable for data that it has stored at the request of an advertiser, unless, having obtained knowledge of the unlawful nature of those data or of that advertiser’s activities, it has failed to act expeditiously to remove or to disable access.
  • The proprietor of a trademark is entitled to prohibit an advertiser from advertising using a keyword identical to its trademark if the advertiser has used the mark to advertise goods or services identical to those for which the mark is registered.

    This is in cases where that advertisement does not enable an average Internet user to ascertain the origin of the advertised goods or services. A recent case handled by the ECJ concerns L’Oréal and others v eBay. The Advocate General issued an opinion, though it is not binding on the court. 

    According to the opinion, eBay is generally not liable for trademark infringements committed by its users on its electronic marketplace. The operator remains exempt as regards the hosting activities. On the other hand, it is not exempt in relation to other activities.

    Those situations must be evaluated on the basis of the relevant national law provisions and principles, in particular as regards the grant of damages or other financial remedies for the activities that are not exempt. The Advocate General points out the following:
  • Although eBay does not itself sell L’Oréal goods on its website, it nevertheless offers an alternative source for buying them that coexists with the distribution network of the trademark proprietor. Therefore, by reserving L’Oréal’s trademarks as keywords leading customers to its Internet marketplace, eBay uses these trademarks in relation to goods marketed by L’Oréal under these signs.
  • However, the use of the disputed trademarks as keywords by eBay does not necessarily result in misleading the consumers as to the origin of the offered goods. He finds that in cases where the advert itself is not misleading as to the nature of the advertising Internet marketplace operator, the function of the trademark of indicating the origin of the product is not likely to be jeopardised.
  • If the use complained of by the trademark proprietor consists of the display of the sign on the website of an operator of an electronic marketplace itself rather than in a sponsored link of a search engine, it cannot be deemed as use of the trademark in relation to goods by the marketplace operator, but by the users of the marketplace. In effect, in such cases, the marketplace operator merely allows its clients to use signs that are identical to trademarks without using those signs itself.
  • Nevertheless, while eBay is generally exempt from liability for information stored by its clients on its website, it still remains liable for the content of data that it communicates as an advertiser to a search engine operator (the hosting exception does not exempt eBay from any potential liability it may incur in the context of its use of a paid Internet referencing service).
  • The exemption from liability does not apply either to cases where the electronic marketplace operator has been notified of the infringing use of a trademark and the same user continues or repeats the same infringement. In that case, a judicial injunction can be given against the electronic marketplace operator to prevent the continuation or repetition of the infringement. Polish authorities have agreed with IP owners that eBay activity cannot be treated as a hosting service, because it is not technical, automatic and passive. 

Activities taken by Internet service providers

According to Article 14 of the Polish E-Services Act of 18 July 2002 (Polish equivalent of Article 14 of the EU directive on electronic commerce):

  • A party that provides data storage services does not bear responsibility for the stored data, if it is not aware of the unlawful nature of the data or associated activities, and in the case of receiving official notification or obtaining reliable knowledge that the data or related activities are illegal, immediately prevents access to these data.
  • The service provider, after receiving official notice of the unlawful nature of the stored data supplied by the customer and preventing access, is not liable to the customer for damage resulting from disabling access to these data.
  • A service provider that has a reliable knowledge of the unlawful nature of the stored data supplied by the customer and has prevented access to this data is not liable for damage caused to the customer, as long as the recipient was immediately notified of the intention to prevent access.

According to Article 15 of the act, the entity providing services defined in Article 14 is not under an obligation to verify the data transmitted, stored or accessed by that entity.

In the EU and EFTA areas, Google does not prevent the selection of trademarks as keywords. However, in response to a complaint, Google will conduct a limited investigation as to whether a keyword (in combination with particular advert text) is confusing as to the origin of the advertised goods and services. An example could be an advert that falsely implies affiliation with the trademark owner.


If Google finds that it is confusing, it will remove the specific advert that is the subject of the complaint. It is also stated that advertisers are responsible for the keywords they choose to generate advertisements and the text that they choose to use in those advertisements. Google AdWords prohibits the sale or promotion of counterfeit goods, and ads can be removed when they fall foul of this provision. As a general rule, Google reacts to notifications of copyright infringements when it is satisfied of presumptions in international intellectual property rights. It also takes down accounts created by repeat infringers.

According to Allegro’s regulations (Allegro is the most popular Polish online auction website), sellers undertake not to offer for auction goods that violate the law or the rights of third parties (in particular copyright and other intellectual property rights).

Allegro is not responsible for the behaviour of users, and is not responsible for the quality, safety or legality of the goods sold at auctions, or the accuracy and reliability of the information provided by users. Allegro can remove an auction if it violates the regulations or applicable provisions of law or might be harmful to a company’s reputation. Allegro may suspend user accounts if users break the rules.

Allegro has created the Rights Protection Cooperation Program in order to eliminate auctions for items and services infringing the law. Allegro’s actions focus mainly on limiting the sale of counterfeit items from the platform. However, Allegro also intervenes after receiving reports of infringements of industrial property rights or copyrights, including misleading use of a trademark as a keyword and in auction descriptions. The use of figurative trademarks, logos or others to which the user is not entitled is also forbidden, and these auctions may be blocked.

Actions against infringers might fall under the provisions of the Civil and Criminal Codes, IP Law or the Combating of Unfair Competition Act. The Polish Law on Cosmetics (which regulates the introduction of cosmetics into the market) may also be advisable.

At present, we await the judgment of the ECJ, which will give crucial guidance on the services provided by Allegro, eBay and others that are not considered typical hosting services. In the meantime, IP holders should co-operate with Internet service providers in order to eliminate unlawful activities. Polish law provides a wide range of remedies to combat e-infringers.

Anna Szajna is a lawyer at Patpol. She can be contacted at:

Maria Jurek is a lawyer at Patpol. She can be contacted at:

This article was first published on 01 January 2011 in World IP Review

ECJ, Polish IP law, Google, L’Oréal, eBay, ISPs

Trademarks and Brands Online