Trademark infringement and secondary liability for counterfeit goods with the special focus on the fashion trade in online market places

Bc. Ekaterina KAPUSTINA

Master's thesis

Abstract:

The theme of this master thesis is trademark infringement and secondary liability for counterfeit goods with a special focus on the fashion trade in online marketplaces. This master thesis deals with the issues connected to the selling of counterfeit goods especially in online environment. Subsequently, it deals with the issues of legal liability for trademark infringement and tries to answer the question, if the current regulations provide sufficient protection to owners of trademarks in the fashion business. Therefore, it examines the question whether the distribution of responsibility among all interested parties is set in the right way. As a consequence, there needs to be re-evaluation of the current standards and relevant norms which deal with the issues of secondary trademark liability. Thesis is divided into two chapters. The first chapter deals with the historical aspects of counterfeiting and first legislative acts, which tried to regulate this negative trend, The second part of the first chapter specifically deals with the well known "Lanham Act" and its importance for federal trademark protection. The Lanham Act is also of big importance because it provides definition of a "trademark" and also the definition of "counterfeit". The second chapter deals with the US and European legal perspectives and norms regulating secondary trademark liability. Within the United States system, the legal order was not prepared for the selling of counterfeit goods in an online environment. Therefore, courts had to form the secondary trademark liability in the United States. Especially relevant in this context is the case of Tiffany, which amplified the protection given under the Inwood test by adding a good-faith element. On the other hand, in regards to the Tiffany case, under European Union law, failing to comply with the notice or any safe harbour provision will only eliminate automatic immunity. Therefore, under European Union law, liability will only arise if the standard of accessory liability under national law is also satisfied. The second chapter, therefore, compares both legal systems and points out the possibility of shifting the burden of secondary liability from intellectual property right owners to intermediaries.

Abstract:

The theme of this master thesis is trademark infringement and secondary liability for counterfeit goods with a special focus on the fashion trade in online marketplaces. This master thesis deals with the issues connected to the selling of counterfeit goods especially in online environment. Subsequently, it deals with the issues of legal liability for trademark infringement and tries to answer the question, if the current regulations provide sufficient protection to owners of trademarks in the fashion business. Therefore, it examines the question whether the distribution of responsibility among all interested parties is set in the right way. As a consequence, there needs to be re-evaluation of the current standards and relevant norms which deal with the issues of secondary trademark liability. Thesis is divided into two chapters. The first chapter deals with the historical aspects of counterfeiting and first legislative acts, which tried to regulate this negative trend, The second part of the first chapter specifically deals with the well known "Lanham Act" and its importance for federal trademark protection. The Lanham Act is also of big importance because it provides definition of a "trademark" and also the definition of "counterfeit". The second chapter deals with the US and European legal perspectives and norms regulating secondary trademark liability. Within the United States system, the legal order was not prepared for the selling of counterfeit goods in an online environment. Therefore, courts had to form the secondary trademark liability in the United States. Especially relevant in this context is the case of Tiffany, which amplified the protection given under the Inwood test by adding a good-faith element. On the other hand, in regards to the Tiffany case, under European Union law, failing to comply with the notice or any safe harbour provision will only eliminate automatic immunity. Therefore, under European Union law, liability will only arise if the standard of accessory liability under national law is also satisfied. The second chapter, therefore, compares both legal systems and points out the possibility of shifting the burden of secondary liability from intellectual property right owners to intermediaries.

Keywords

intermediary, trademark, secondary liability, counterfeit, online market place, intellectual property

Language used: English

Date on which the thesis was submitted / produced: 12. 7. 2021

Thesis defence

• Supervisor: JUDr. Miluše Hrnčiříková, Ph.D.

Palacký University Olomouc

Faculty of Law

Master programme / field:
International and European Law / International and European Law