Fourth victory for Louis Vuitton against eBay

France
In Louis Vuitton Malletier v eBay Inc (February 11 2010), the Paris Court of First Instance has ruled in favour of Louis Vuitton Malletier in a case involving misspellings of the well-known VUITTON marks.
 
Louis Vuitton alleged that when misspellings of its VUITTON marks, such as ‘Vuiton’, ‘Vitton, ‘Wuitton’, ‘Wuiton’, ‘Vuton’ and ‘Louis Viton’, were entered in search engines including Google, Altavista, MSN, Yahoo! and Yahoo! Shopping, this triggered sponsored links which directed internet users to eBay's websites - and, notably, to auctions for handbags.
 
Louis Vuitton first requested that eBay International AG put an end to this situation. As the sponsored links were maintained, in 2006 Louis Vuitton sued eBay Inc and eBay International AG (collectively eBay) for:
  • infringement and harm to the repute of its trademarks VUITTON, LOUIS VUITTON and LV;
  • unfair competition; and
  • misleading advertising.
In its defence, eBay first argued that most of the products offered for sale on its websites - and to which the sponsored links pointed - were genuine. Second, eBay submitted that the requirements for trademark infringement were not fulfilled because the keywords in question did not actually designate the products or served only an informative purpose.
 
The Paris Court of First Instance found that:
  • there had been infringement of Louis Vuitton's marks;
  • eBay had caused harm to the reputation of Louis Vuitton's marks; and
  • eBay had engaged in unfair competition.
In particular, the court found that the keywords at issue shared significant similarities with Louis Vuitton's marks. According to the court, the systematic association of misspellings of the marks with the word ‘bag(s)’ in the sponsored links constituted use as a trademark.
 
Therefore, the court found that eBay's actions harmed the reputation of Louis Vuitton's marks, company name and domain name, as their purpose was only to increase the traffic to its auction sites, which could mislead the public into believing that there was a commercial relationship between eBay and Louis Vuitton.
 
However, the court rejected the misleading advertising claim insofar as the facts relating thereto did not differ from those concerning the trademark infringement claim.
 
The court awarded a total of €200,000 in damages to Louis Vuitton.
 
This is Louis Vuitton's fourth legal victory against eBay in France. The facts of the case, as well as the conclusions reached by the court, are similar to those of a September 18 2009 decision, which involved the use as keywords of trademarks owned by several companies of the Louis Vuitton group. 
 
Interestingly, in the present case the court stated that there was no reason to delay its decision until the judgment of the Court of Justice of the European Union (ECJ) in Google France (Joined Cases C-236/08, C-237/08 and C-238/08), which is due on March 23 2010 (for further details on these cases please see "Supreme Court refers questions on keying to ECJ", "More questions referred to the ECJ in Google Cases" and "Advocate general favours Google in AdWords cases"). The court pointed out that the cases before the ECJ related to use of registered trademarks as keywords, but not to use of the marks in the text of the sponsored links.
 
Franck Soutoul and Jean-Philippe Bresson, INLEX IP EXPERTISE, Paris

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