Nike obtains victory against online platform operator

The Federal Civil and Commercial Court of Appeals (Third Chamber) has issued an interesting decision in Nike International Ltd v Compañía de Medios Digitales CMD SA (Case 3239/2007, May 21 2015).

The defendant operates a virtual online platform (similar to eBay) under the name Mas Oportunidades, whereby different products are offered for sale by any interested party.

Certain users advertised Nike “replicas” and “imitations”. Nike sued Mas Oportunidades and asked that not only those advertisements, but also all other advertisements for Nike products, be taken down. Nike also sought damages.

The Court of Appeals, quoting the EU decisions in L'Oréal and Louis Vuitton, and citing the E-commerce Directive (2000/31/EC) as “influential”, held as follows:

1. The defendant was liable for publishing advertisements in which it was evident that an infringement was being committed, and did not comply with its obligation to prevent its activity from generating illegal acts. Those illegal acts could have been avoided simply by putting adequate filters (eg, for “replicas” and “imitations”) in place.

2. A general prohibition on all advertisements for goods bearing the mark NIKE was rejected, because the sale of original goods, used or not, could not be prevented due to the exhaustion of the trademark owner’s rights.

3. It was the obligation of the trademark owner to point out the existence of infringing acts to the defendant (ie, all other "non-ostensible" infringements that cannot be filtered).

4. The defendant was ordered to take down, within 24 hours, all advertisements for products “presumed to be infringing” as indicated by the plaintiff and, immediately afterwards, to provide the complete identity data of the advertisers (ie, name, registration number if it was a corporation, email, phone number and fiscal number). Such data must be collected by the defendant from any party that wishes to place an advertisement. All this information must be kept for three years by the defendant.

5. The advertiser must be informed by the defendant that such information may be given to the trademark owner and that sanctions may eventually be imposed (if the advertiser is offering infringing products).

6. The defendant was ordered to pay Ps180,000 for the damage caused.

This case contributes to clarifying a non-regulated area. Certain issues still remain to be solved, such as cases where the online platform operator is not convinced that an advertisement identified by the trademark owner offers infringing products for sale, and requires evidence of infringement before taking the advertisement down.

Jorge Otamendi, G Breuer, Buenos Aires