Two Approaches to Secondary Trade Marks Liability. Part II: A Limited Harmonization Under European Union Law

Abstract

EU trade mark law is essentially laid down in two statutory instruments, namely, (i) the EU Trade Mark Regulation (EUTMR), which governs EU-wide trade marks and is directly applicable to all EU Member States; and (ii) the Trade Mark Directive (TMD), which harmonizes Member States’ national trade marks. Both statutes confer on the trade mark owner the exclusive right to prevent some third-party uses of a sign identical or similar to her registered trade mark. Those uses encroach directly upon the proprietor’s exclusive rights and thus constitute a primary trade mark infringement. In contrast, with the exception of some preparatory acts, third-party activities that contribute to, or take advantage of, someone else's primary infringement, are not dealt with by the EUTMR nor by the TMD. The secondary liability that may arise from those activities is essentially left to Member States’ national laws, although crucially conditioned by EU law in some respects. Particularly, (i) the notion of primary infringement, which is harmonized by the EUTMR and the TMD – as construed by the Court of Justice of the EU (CJEU) –, is key to drawing a line between primary and secondary infringement; (ii) when it comes to internet intermediaries, the E-Commerce Directive (ECD) sets some limits on the liability that may be imposed under national law, thus affecting secondary liability; and (iii) the Intellectual Property Enforcement Directive (IPRED), obliges Member States to provide for the possibility of issuing injunctions against intermediaries who are not engaging in a direct infringement but whose services are being used by a third party to infringe intellectual property rights, thus imposing some sort of secondary liability – although limited to injunctive relief.

This chapter will focus on the common elements of EU law referred above, which directly affect the national approaches on secondary liability. It will first present the boundaries of primary infringement. Then it will briefly consider the main grounds used in national law to impose secondary liability on uses that cannot be deemed primary infringements. Next, it will turn to the liability limitations laid down by the ECD safe harbours. Finally, the chapter will deal with injunctive relief required by the IPRED.

Keywords: Trademarks, Secondary liability, EU law