The main focus of this thesis is the law of contributory trade mark liability that arises online because the current state of the law does not appear to deal effectively with the issues that the Internet poses. Henceforth, the thesis will seek after the appropriate solution.
The current EU law does not provide rules that specifically govern contributory trade mark liability that arises online. Instead, the rules applicable to the issue appear as a two- tiered system. First, there is a horizontally applicable pan-EU immunity regime
39 O’ Doherty, ‘Online trade mark and copyright infringement injunctions: implications on ISPs, site owners and IPR owners’ (2016) 84-85. (‘The speed, ease and anonymity that the internet offers to infringers have
made the legal enforcement of IPRs incredibly difficult.’)
40 Weber argues ‘[t]he solution of the manifold liability issues arising in the context of Internet of things
and new contract forms can neither be resolved through a single legal instrument nor through a technical solution…. Rather a combined approach is necessary creating the practical reality on which the law can attach.’ Weber, ‘Liability in the Internet of Things’ (2017), 207.
established within the ECD which provides immunity from liability for certain intermediaries. These rules apply to the issue since Internet intermediaries are at the core of contributory liability cases. However, those rules only determine the circumstances when an intermediary would not be liable. In other words, the immunity regime does not specify when an intermediary should be liable or the conditions of the liability. Moreover, those rules are provided as an additional protection for intermediaries meaning that losing the immunity does not automatically trigger the liability. The liability issue, thus is governed the traditionally established principles of tort law. However, tort law rules are not harmonised within the EU. Thus, each national court applies its domestic tort law rules when the contributory trade mark liability issue comes before the court.
Therefore, the issue of contributory trade mark liability that arises online is firstly a subject to the examination in the light of the EU’s immunity regime; then the MSs courts make their examination under their domestic laws that govern the issue. In that sense, the law applicable to the online contributory trade mark liability is two-tiered. Yet, the assistance of the immunity rules is limited on the ground that those rules only determine the cases where an intermediary would be immune from liability. Therefore, what is evident under the existing system is that contributory trade mark liability is in fact decided under national tort law rules of the MSs since those are the rules governing the liability. Contributory liability is not a new type of liability under tort law. Courts have been examining the issue and applying the rules to the offline context over the years, even though the principles have been quite divergently established within the national laws of the different MSs. Nevertheless, this thesis concerns contributory trade mark liability that arises in a new and rather unique context: the Internet. It is evident that the Internet differs from the offline context in many aspects. Having Internet intermediaries at the core makes the issue trickier given their position within the Internet infrastructure and their capabilities in comparison to subjects of offline world cases. Those differences give rise to the new and rather unique challenges that are peculiar to the online world which require more Internet-specific considerations. It can even be said that the immunity regime which establishes Internet-specific rules cannot keep up with the pace of the Internet’s evolution. Although it covers most types of Internet intermediaries today, it still fails to to mention linking providers. It should also not be ignored that it has been 18 years since it was published. This is a considerable period of time in the age of technology.
Thus, it is important to have laws in place that tackle Internet-specific challenges. Given the above, it is therefore important to examine whether the existing rules governing contributory liability are satisfactory in dealing with contributory liability issues that arises online. This is indeed the principal question that the thesis is built on. The focus of the thesis is to be on trade marks and the contributory liability question that arises from the selling of counterfeits. This is mainly because trade marks are one of the least considered IP rights within the EU with respect to online infringing activities.41 Indeed, even the latest developments undertaken in pursuit of the Digital Single Market (DSM) Strategy42, effective enforcement of rights online, more uniformity and tackling illegal content43 mainly consider and expressly mention copyright. However, this does not necessarily mean that trade mark rights are less important in comparison to other IP rights, and neither is the law of contributory trade mark liability fully working and satisfactory to deal with the emerging and existing issues. It rather suggests that trade marks and the issues surrounding them have been neglected since there is no reason why the issues that arises online (ie ambiguity over the application of the rules, lack of further insight as to the rules governing online infringing activities or whether there is a need for right specific solutions) would not also be valid and significant for trade marks.
Moreover, establishing the law of contributory trade mark liability would also provide assistance in determining whether the horizontal approach adopted by the EU in dealing with online activities is the appropriate approach for trade marks and in general. This is because there is no additionally provided rules for trade marks other than the immunity
41 The question of contributory copyright liability that arises online has been mainly examined in the academia. Some of the examples of those works are: Lilian Edwards, ‘Role and Responsibility of Internet Intermediaries in the Field of Copyrights and Related Rights’ (2011) WIPO Study; Christina Angelopoulous ‘Beyond the Safe Harbours: Harmonising Substantive Intermediary Liability for Copyright Infringement in Europe’ (2013) Intellectual Property Quarterly 3 253-274; Tatiana-Eleni Synodinou, ‘Intermediaries Liability for Online Copyright Infringement in the EU: Evolutions and Confusions’ (2015) 31 Computer Law & Security Review 57; Christina Angelopoulos, ‘Sketching the Outline of a Ghost: the Fair Balance between Copyright and Fundamental Rights in Intermediary Third Party Liability’ (2015) 17(6) 72-96 <https://www.emeraldinsight.com/doi/full/10.1108/info-05-2015-0028>; Christina Angelopoulos, ‘European Intermediary Liability in Copyright: A Tort- Based Analysis’ (DPhil thesis, University of Amsterdam 2016); Christina Angelopoulos, ‘On Online Platforms and the Commission’s New Proposal for a Directive Copyright in the Digital Single Market’ (2017) Centre for Intellectual Property and Information Law University of Cambridge, 17-31 Available at <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=2947800>.
42 Commission, ‘A Digital Single Market Strategy for Europe’ (Communication) COM (2015) 192 final. 43Commission, ‘Tackling Illegal Content Online Towards an Enhanced Responsibility of Online Platforms’ (Communication) COM (2017) 555 final.
regime of ECD and the tort law rules - neither do the developments specifically consider trade marks.
It should again be underlined that the thesis considers and focuses on the contributory trade mark liability issues where it is not questionable that the direct trade mark infringement has taken place. In that sense, the cases dealing with keywords are not in the scope of the thesis.
On this basis, this thesis asks: ‘To what extent does the current state of the law of
contributory trade mark liability that governs online issues prove to be satisfactory in dealing with the ongoing and emerging issues that the Internet brings?’. Although this is
the core question, this thesis is founded on three main objectives: 1) establishing the current state of online contributory trade mark liability; 2) identifying ongoing and emerging issues that arise and reassessing the law in the light of the new initiatives undertaken by the EU; and 3) seeking a relief for the issues where the law falls short in dealing with them.
The current state of the law should first be analysed as the law is shaped by both the immunity rules and tort law rules of the MSs as there is a lack of specific rules dealing with the issue. This assessment will also assist in identifying the issues that arise as well as examining whether the existing law satisfactorily provides a framework to deal with the issues identified. Accordingly, it will provide the answer to this question. This is a very important analysis to undertake and question to answer as it will also demonstrate whether the approach undertaken by the EU in pursuit of dealing with online issues is indeed the accurate and appropriate approach for the trade mark realm. Finally, a solution will be sought for the shortcomings identified. The existing mechanisms which are either already implemented and applied (NTD and injunctions) or are not yet implemented but considered by the EU legislators (duty of care, voluntary measures) for enhancing the protection of rights online and providing further harmonisation are to be examined in that regard. Those second type of mechanisms are most commonly considered and mentioned in relation to copyright and other rights but not trade mark. Regardless of the lack of trade mark consideration, those mechanisms will still be examined to see whether they can also work for trade marks.
In the light of these explanations, the originality of this thesis can therefore be stated to have three aspects. Firstly, this thesis considers trade marks as they are least focused on
and examined IP right with respect to online infringements. Although the developments are considered and have been initiated by the EU legislators pursuant to further harmonisation, there is hardly any trade mark specific consideration or actions by the legislators to deal with trade mark related issues that arisen online, neither do the actions already undertaken expressly mention trade marks. Furthermore, there exists very limited case law that considers contributory trade mark liability online which might shed light on the ambiguities that arise. In the light of this lack of attention and further insight, the law of online contributory liability appears to be incoherent. Thus, the law and its framework require systematic assembly with respect to online contributory trade mark liability. This thesis will therefore undertake this work.
Secondly, although there are other academic works that assess trade mark liability online, this thesis adopts a narrower approach as it focuses specifically on online contributory trade mark liability that arises from counterfeit selling and excludes direct liability cases or the cases that is questionable that the direct infringement has taken place. By doing so, the merits of the thesis not only lie in a comprehensive analysis of the current state of EU law on the subject but also in addressing the issues together with submitting plausible remedy to these issues.
Thirdly, its novelty lies not only with the analysis of how satisfactory the law of online contributory trade mark liability is for ongoing and emerging challenges and what can be the cure in that regard, but also with seeking to explore the missing parts in the other academic works in relation to the latest developments undertaken within the EU with respect to the DSM Strategy and Internet regulation. Indeed, these initiatives are important for the online world because they seem to focus on different policy than the immunity regime of the ECD was built on. Duties and responsibilities of the intermediaries in the online world have been the focus of the legislators, not their immunities. The concern therefore appears to be what can the intermediaries do, not how can the innovation be supported in the online world. The appraisal undertaken in this thesis considers this seemingly new approach of the EU as well as the mechanisms mentioned in that respect to see how they would fit into the trade mark regime and whether they would provide desired solutions. Besides, the analysis provides an overview of how the EU immunity regime is applied to rights other than trade marks, ie copyright, privacy and the right to be forgotten (RTBF) and fundamental rights since these rights have been at the core of the discourse on intermediaries.