Recently, Jemella Group appealed to the Higher Regional Court of Hamburg following a decision from the German court of first instance, in which the operators of online marketplace Wish, ContextLogic Inc and its EU subsidiary ContextLogic B.V, were held to be secondary infringers to trade mark infringement following several instances of third-party sellers offering for sale counterfeit ghd goods.
In the first instance, Jemella Group was partially successful in its claims, seeking to establish the defendants as primary infringers through their failures to monitor and remove infringing goods uploaded by sellers. However, the German court of first instance initially found that the defendants contributed to the infringements rather than actively committing them.
In being granted its appeal, Jemella Group sought to argue that the defendants had used its “ghd” mark themselves in commerce, relying on the principles set out by the CJEU’s Louboutin case to assess whether the defendants were indeed liable for primary infringement. The main focus of the Hamburg court was that the defendants had actively deemed infringing listings as being “authentic”, meaning that were an end user to search “ghd” then results containing solely the infringing goods were produced. The defendants consequently sought to rely on the safe harbour defence, being that they supposedly did not play an active role in the infringements, though the Hamburg court pointed to the defendants’ revenue share from sales of the infringing goods in finding them liable for primary infringement.
The Hamburg court also heard that the defendants’ online marketplace kept sellers’ identities practically anonymous, while EU and German laws required that at least their true names be displayed with the online listings. Jemella Group consequently also succeeded in a claim for unfair competition.
With the wheels now in motion for Jemella Group to seek a greater damages award on the basis of the increased severity of infringement, supposedly neutral online marketplaces may now be revising their practices to prevent becoming embroiled in claims of their own.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
