NEWS

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03-01-2018

 

Summary condemnation of the ALIBABA companies for trademark infringement and unfair competition:  The rejection of the claims for compensation

in the absence of proof of any prejudice

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Lafuma Mobilier, which manufactures and sells furniture, found that the electronic platform Alibaba, which allows professional buyers and sellers to come together, was publishing advertisements reproducing its distinctive signs and brands for the sale of copies of his armchairs. It also noted that the disputed site did not include the mandatory legal notices relating to the publisher's contact details.

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Lafuma Mobilier has therefore brought proceedings against Alibaba France, Alibabaholding, Alibaba Group and Alibaba Hong Kong before the Tribunal de Grande Instance of Paris. It requested that Alibaba France be ordered to cease all use of the sign " Lafuma " as a trademark, domain name, sign , keyword, to delete the disputed advertisements and to include the legal notices on its site. It also asked the judge in chambers to order the defendants to pay a provision for compensation for the damages suffered as a result of the acts of infringement and unfair and parasitic competition.

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By interim order of November 21, 2017, the President of the Tribunal de grande instance of Paris partially granted the claims of Lafuma Mobilier.

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First, he ruled that Alibaba companies could not claim hosting status to escape liability for content posted on the platform. Indeed, he considered that the Alibaba companies have an active role in the content of the site such as to give them "  knowledge and control of the data published on its site_cc781905-5cde-3194-bb3b -136bad5cf58d_”. He pointed out that they highlight the offers of companies that have subscribed Premium paid subscriptions to the Alibaba platform and that therefore "  they are not limited […] to a neutral supply of the service offered by the platform ", but "  prioritize the offers offered according to their own interest ". In addition, he pointed out that the Alibaba companies "  offer payment facilities in order to promote in France the products offered by Chinese merchants who subscribe to their site " and have implemented a policy for the protection of intellectual property rights under the terms of which they reserve the right to automatically withdraw infringing products. The judge in chambers concluded that they exercised control over the content of the offers published on the site.

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By this order, the judge in chambers thus applies the criteria adopted by case law, and in particular by the Paris Court of Appeal in the Ebay case (CA Paris, January 23, 2012 No. 11/00746), to conclude that publisher status of Alibaba companies.

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On the acts of infringement, the President of the Court ruled, pursuant to Article L 713-2 of the Intellectual Property Code, that they were characterized since the signs were reproduced identically and the products sold are the same as those referred to in the registration of the disputed marks. Consequently, he granted the measures to block the reproduction of the disputed marks until a decision is rendered on the merits. On the other hand, he rejected the request for provisional compensation, for want of the plaintiff to have provided proof of the alleged damage, and at the very least proof of " l'existence d'un loss of earnings possibly by loss of market share or turnover ”.

 

 

On the acts of unfair and parasitic competition, it was also judged that these were characterized by the use of the sign " Lafuma " on the pages from the Alibaba site to sell the same products as those sold by Lafuma Mobilier. The interim judge found that the presence of the sign " Lafuma " infringed the corporate name and trade name of Lafuma Mobilier since 'there was "  confusion about the authenticity of the products and that purchasers [were] led to believe that they were products manufactured and sold with the consent of the company Lafuma Mobilie, especially since these products are very similar to Lafuma products whether or not these are protected by a model, so that the confusion is increased”. The judge in chambers therefore ordered the defendants to cease all use of the sign " Lafuma " infringing the corporate name and trade name of the plaintiff, or title of keywords allowing a search on the Alibaba site. However, he rejected the request for provisional compensation for the same reasons as those set out for the acts of infringement.

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This order is an interesting reminder of the need for the plaintiff to provide proof of the damage actually alleged in order to obtain a provision for the acts of infringement and unfair competition, even if the judge would have retained the acts alleged infringement and unfair competition. It is not uncommon for the courts to award provisions and damages, without any proof of the harm actually suffered.

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On the other hand, the importance of the sums allocated under article 700 of the Code of Civil Procedure should be noted.

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Regarding the absence of legal notices on the disputed website on the day of the summons, it was held that this omission constituted an act of unfair competition " since the defendant companies, by exonerating themselves from respect the legal obligations specific to the European market, and more particularly French, adopt an unfair behavior with regard to the rules of competition which apply to all the companies. noting that the legal notices had been published on the day of the hearing and one month after the summons, only ordered the defendants to separate the legal notices from the conditions of use published in the same section.

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It should be noted that this ordinance thus recalls the importance of legal notices on websites. Indeed, in addition to the penalties provided for by article 6 of the LCEN which provides for fines 375 000 euros for legal persons and the prohibition penalties mentioned in article 131-39 2 ° and 9° of the Penal Code (prohibition to exercise a professional activity for a period of five years or more and to post the decision pronounced or the dissemination of it by the written press or any means of communication to the public), the absence of legal mentions is likely to constitute an act of unfair competition.

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Carole Couson-Warlop, lawyer, Cabinet ARTLEX Nantes

Florence Fekom, lawyer, Cabinet ARTLEX Nantes

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TGI Paris, summary order, November 21, 2017, Lafuma Mobilier / Alibaba and others : intellectual property, trademark law, counterfeiting, unfair and parasitic competition, summary proceedings, damages, legal notices, requests provisional indemnities

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