In the latest instalment of L’Oréal’s pan-European campaign of litigation, the English High Court has ruled that eBay is not jointly liable for trade mark infringements committed by users listing fake goods and authentic goods imported from outside the European Union for sale on eBay’s UK website.

Whilst the judge in L’Oréal SA v eBay International Ag [2009] EWHC 1094 concluded that eBay was not liable in respect of its users’ trade mark infringements, he declined to rule on four potentially important points, preferring instead to refer them to the European Court of Justice (ECJ).

The first of these is whether the sale of testers, so-called “dramming products” (unbranded bottles of perfumes and cosmetics used by retailers to top-up testers) and unboxed products amounts to trade mark infringement. Although this point was academic in the present case, as the judge held that the users in question were liable for other trade mark infringements, the question is potentially relevant to the scope of the relief to which L’Oréal might be entitled.

Second, and more importantly to eBay, the judge did not rule on whether eBay’s use of sponsored links in relation to goods found to infringe L’Oréal’s trade marks amounted to infringement of those trade marks. Third, the judge found himself unable to rule on whether eBay has a defence under Article 14 of the E-Commerce Directive. This provides that a service provider is not liable for illegal acts carried out by its users where the service provider is not aware of those acts and where the provider acts promptly to prevent any such acts once it is made aware of them.

Fourth, the judge was also of the view that the relevant provision of the Enforcement Directive is unclear. Article 11 of the Directive provides that Member States shall ensure that injunctions may be granted against intermediaries whose services are used by a third party to infringe an intellectual property right. The judge found that, although as a matter of domestic law he had the power to grant an injunction against eBay in respect of its users’ trade mark infringements, the precise scope of Article 11 was again a matter for the ECJ.

This decision follows decisions in eBay’s favour in similar cases brought by L’Oréal in France and Belgium. The litigation in Spain is still ongoing.

On the same day as the UK judgment, the same judge handed down a decision in a case brought by Interflora against Marks & Spencer for an interim injunction to prevent the use of “Interflora” as a sponsored Google Adword search term, on the basis that such use amounted to trade mark infringement. The judge declined to grant the injunction and referred the matter to the ECJ, citing the ongoing referrals from other national courts on the same point and also on his own referral in L’Oréal.