This document discusses online trademark infringement and the liability of intermediaries. It begins by providing background on the large scale of counterfeit goods sold online and how trademarks represent brand identity. The objective is to study standards across jurisdictions regarding online trademark infringement and compare to laws in India. It then examines concepts like secondary liability and how different regions like the US and EU approach holding intermediaries liable for infringement through their platforms. The document concludes by discussing the pros and cons of intermediary liability and need for balance and international standards.

1. ONLINE TRADEMARK
INFRINGEMENT AND THE
LIABILITY OF
INTERMEDIARIES
ISHAN GUPTA (11IP60027)
UNDER THE GUIDANCE OF : PROF. DR. T K BANDYOPADHYAY

2. Background
 The sale of counterfeit goods over the Internet amounts to more than $30
billion worldwide.
 Trade mark is an Important Intellectual property which represents the
Brand identity.
 Globalisation through Internet has caused lot of anomalies.

3. Objective
 To study the standards in different jurisdictions with respect to Online
trademark infringement and to weight the pros and cons in comparison
with the laws in India.

4. Introduction
 Trade mark.
 Infringement: Mark identical or deceptively similar.
 Online Trademark infringement
 Who is a Intermediary?
 Search engines, social media sites, online auctions & retail sites.
 Problem.

5. Contd.
 The first and foremost issue: Jurisdiction.
 Article 8 of Paris Convention.
 The next problem: The infringer cannot be traced.

6. Secondary Liability.
 The actual infringers cannot be traced so the Courts have started holding the
Intermediaries liable.
 Secondary Liability: Contributory
Vicarious
 US: The Lanham Act, 1946 : silent of Secondary liability - Courts have laid down
the standard.
 Inwood Labs., Inc. v. Ives Labs., Inc., 1982: Two point test.
 Hard Rock Cafe Licensing Corp. v. Concession Svcs. Inc., 1992: Wilfully blind.

7. Contd.
 Fonovisa Inc. v. Cherry Auction, Inc.,: 1996: Wilfully blind.
 Gucci Am., Inc. v. Hall & Assocs. and MindSpring Enter., 2001: Liability of ISP.
 The current position in US:
 Tiffany (NJ) Inc. v. eBay Inc.,2010: Inwood test.
 EU: Liability of non direct infringers- not defined in EU Trade Marks Directive or
The EU Community Trade Mark Regulation - it is matter of domestic law.

8. Contd.
 Directive 2000/31/EC : E-Commerce Directive.
 A service provider is not liable if:
 Has no knowledge of illegal activity.
 Removes such information upon acquiring knowledge.
 Considering the German case, Internet-Versteigerung I–III
 Plaintiff :Rolex v. ricardo
 (Internet Auction Decisions I–III):
 Same test as that of Tiffany v. eBay(Inwood).
 Lack of intent: eBay not liable.

9. Contd
 INDIA: Consim Info Pvt Ltd v Google India Pvt Ltd., Madras HC case
discussing the contributory liability of intermediary.
 Plaintiff had registered trademarks of “Bharat Matrimony”, “Telugu
Matrimony”, etc. ;The defendants (Jeevan Sathi, et al.) had bought keywords of
exactly the same or similar words. So, the plaintiff brought an action of
Trademark infringement through keywords.
 Action was brought against Google since it provided the ad words.
 The case was decided in Google’s favour.

10. Pros & Cons
The pros and cons of making and Intermediary liable.
 Difficulty in evaluating the Ownership.
 Specialists required for identifying counterfeit products.
 Time consuming and expensive.
 eBay has a VeRO program (Verified Registered Owner).
 Sites derive profit.
 They cause damage to actual Brand owner, by providing a plat form for infringes.

11. Conclusion
 Conflict of National Laws creates problems for the Global intermediaries.
 There are Acts evolving with relation to dealing these issues but more
inviolable provisions should be introduced.
 Need for international standards in this perspective.
 Balance between the Owners and Intermediaries is should be maintained.