Trademark Case Law : New means to combat online counterfeiting
Paris Court of first instance, Interim order of November 21, 2017
For the very first time in French law, ALIBABA.COM is considered as a publisher and is being held accountable for the counterfeiting products on its website.
While Alibaba.com, a major Chinese online sales actor, is accelerating its development in France, it has been considered an online content publisher for the very first time. As a result, the company is deemed responsible for letting fraudulent advertisements of counterfeit products on its website.
LAFUMA MOBILIER SAS found that counterfeits of its chairs, reproducing the "LAFUMA" sign, were on sale on Alibaba.com.
As a reminder, since the 2004 Statute for “building confidence in digital economy” (i.e. Loi pour la Confiance dans l'Economie Numérique), a website is either qualified as a host or as a publisher. While the former has a passive and neutral role and merely makes content available to Internet users, the latter plays an active role and determines the content posted online and is responsible for the content published.
In this case, the judge held that ALIBABA.COM was an online publisher on the basis that it influenced the content of its virtual shops. More specifically, the website offered subscriptions that were favoring some companies. For the court, in doing so, ALIBABA had an active role in the website’s content which gave it control over the data published on its site. Also, the company's internal intellectual property protection policy allowed it the opportunity to withdraw from the website some content it deemed counterfeits. This proves that ALIBABA could de facto apply an a priori control over the content of the offers available on its site.
For these reasons, the court decided that ALIBABA was obliged to monitor before publication the lawfulness of all information available on its website.
The judge drew the consequences of this legal qualification by ordering ALIBABA to cease all litigious uses of the "LAFUMA" sign as a trademark, as a corporate name or as a keyword. All ads violating LAFUMA MOBILIER's intellectual property rights must be blocked, subject to a penalty of 4,000 euros per day of delay.
ADVICE FROM LAVOIX EXPERTS
The legal status of publisher and the consequences resulting from it will oblige e-commerce websites to take responsibility for the content available on their site and set up procedures to check the authenticity of goods available on their platforms. This could discourage them from leaving potentially counterfeit advertisements online. Thus, such case-law approach could reduce the number of online counterfeits by narrowing down distribution channels.
The position of the Paris court of first instance must therefore be welcomed as it will provide more protection for the victims of counterfeit marks on the Internet. Decision to be followed !