Online infringement and marketplaces

Online infringement refers to infringements of intellectual property rights committed by means of the internet, in particular the offering for sale of infringing products on marketplaces, social networks or e-commerce sites. It is governed by the ordinary rules on infringement, in an environment where the intermediary plays a central role. Regulation (EU) 2022/2065 (Digital Services Act) sets out the obligations of online platforms, and Directive 2004/48/EC makes it possible to obtain measures against intermediaries whose services are used by a third party to infringe a right.

Liability of marketplaces

A marketplace operator that merely stores offers from third-party sellers benefits from the hosting provider liability regime: it incurs liability only if, having become aware of the unlawful nature of an offer, it fails to act expeditiously to remove it. It loses this protection where it plays an active role giving it knowledge of or control over the offers, for example by optimising or promoting them. In trade mark law, the Court of Justice of the European Union (CJEU) holds that an operator that merely allows sellers to use a sign does not itself use it. It has, however, accepted that the operator of a hybrid marketplace, which also sells on its own account, may be regarded as using the sign where a reasonably well-informed user establishes a link between its services and that sign.

Takedown tools

The Digital Services Act requires platforms to provide a notice mechanism for illegal content, priority processing of notices submitted by trusted flaggers, measures against users who frequently provide manifestly illegal content and, for marketplaces, an obligation to ensure the traceability of traders selling on them. The right holder may also ask the court for blocking or delisting measures targeting infringing sites and obtain from intermediaries the information needed to identify sellers.

Evidence and jurisdiction

Evidence of the offer is established by a report drawn up by a commissaire de justice (judicial officer) following a rigorous technical protocol, or by a test purchase report enabling the product to be obtained. For the purposes of trade mark law, the CJEU requires the offer to be targeted at consumers located in the territory covered by the mark, mere accessibility of the site not being sufficient. In copyright, it accepts the jurisdiction of the courts of each State in which the content is accessible, limited to the damage suffered in that territory. Small consignments from third countries may be detained by customs under Regulation (EU) No 608/2013.

Key points

Online infringement is tackled through platforms’ takedown tools, court measures against sellers and intermediaries, and customs controls. The liability of the platform itself remains limited, save where it plays an active role or uses the sign itself. Proper evidence should be secured before any notice, the mechanisms provided for by the Digital Services Act used and court action reserved for large seller networks or defaulting platforms.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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