41
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
ABSTRACT
The role of online trading is gradually increasing in our lives. Expanding the capabilities of the Internet network allows
you to trade in other countries. At the same time, the issue of consumer protection remains unsettled. In some cases,
they are unaware that they are purchasing counterfeit products. This, in turn, provides an opportunity for
unscrupulous online merchants to gain unjust enrichment. These facts are discussed in detail in this article from a
scientific point of view, which is based on past court decisions.
KEYWORDS
Marketplace, administrator, online trading, counterfeit, trademark, domain name, online retailer, “Yandex Taxi”,
“Tiffany”, “eBay”, “Louis Vuitton”, “L'Oreal”, “Davidoff”, “Amazon”.
INTRODUCTION
As a rule, by the purchase and sale of goods we mean
the place where such transactions are made, which
means a market where we can physically feel the
goods and directly check their quality. At the same
time, there is real information about the quality,
suitability, name and details of the manufacturer and
seller, and there is also a real idea of how and where
you can return the product if it does not meet the
requirements. In Uzbekistan, it is customary to treat
these relations as the usual trade relations, however,
Research Article
CIVIL LEGAL PROTECTION OF TRADEMARKS IN THE DIGITAL ERA
Submission Date:
February 28, 2022,
Accepted Date:
March 20, 2022,
Published Date:
March 31, 2022
|
Crossref doi:
https://doi.org/10.37547/tajpslc/Volume04Issue03-07
Z.Babakulov
Doctor of Philosophy in Law (Ph.D) Researcher of Tashkent State University Law (DSc), Uzbekistan
Journal
Website:
https://theamericanjou
rnals.com/index.php/ta
jpslc
Copyright:
Original
content from this work
may be used under the
terms of the creative
commons
attributes
4.0 licence.
42
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
from year to year; Internet resources penetrate deeply
into the daily life of every citizen, from the sale and
purchase of household goods to the provision of
services. This speaks of the limitless possibilities of
online trading.
The mass spread of the Internet gives rise to the
emergence of new relationships. As a result of this, the
market familiar to us is gradually spreading in online
trading, which, on the one hand, creates certain
conveniences for buyers that allow them to save time
and costs for the purchase of a certain product. This
gives advantages to “online markets” or “online
shopping” over other types of trade. However, it is
worth noting that online trading remains unregulated
at the legislative level, since it has specific features and
does not comply with the framework defined by law.
In this regard, the emergence in our lives of such a
reality as online trading sets us the task of legislative
regulation of these relationships.
In the developed countries of the world, “online
shopping” has already emerged as an established
reality of everyday life.
1
Marketplace is considered to
be a unified online trading platform. There are
thousands of outlets here, where you can find millions
of different goods and services from more than a
hundred world brands
2
. The relationship between
marketplaces and sellers is built in various ways, where
marketplaces can sell goods to end consumers both on
their own behalf and on behalf of the seller. This
condition must be included in the transaction.
3
As an example of online trading, one can cite the
Internet applications “Alif shop”, “Tovar.uz”, “Yandex-
1
M. Khalifa, V. Liu. Online consumer retention: contingent
effects of online shopping habit and online shopping
experience // European Journal of Information Systems. -
2007. - T. 16. - No. 6. - P.780.
2
P. A. Riach, J. Rich Field experiments of discrimination in the
market place //The economic journal. – 2002. – Т. 112. –
№.483. – P.F480.
taxi” successfully operating in Uzbekistan. The
agreement with Yandex Taxi is referred to as the
agreement for the provision of services to the
marketplace, in accordance with the terms of which
the Internet application as a marketplace undertakes
to provide services for the transportation of goods or
a passenger.
Most marketplaces include, when concluding
agreements with sellers, conditions that in case of
violation of the rights to a trademark and service mark,
the damage caused is subject to compensation. In
some cases, this condition is not provided for by the
contract, since such signs of goods or services, as a
trademark and service mark do not matter for the
marketplace, because its main purpose is to make a
profit.
One of the serious problems of trading through the
marketplace is counterfeit products. Social studies
show that citizens in most cases prefer cheap
counterfeit goods, not paying attention to its quality.
As it is known, demand breeds supply
4
, and the greater
the demand for cheap and fake goods, the more offers
of such goods in online auctions. At the same time, the
question of quality and origin of goods becomes the
last turn. This circumstance brings profit to
manufacturers of counterfeit goods, but harms
consumers.
In the course of a study by the Agency for the Fight
against Monopoly of the Russian Federation, it was
revealed that in the country in 2020, compared to 2019,
the share of counterfeit products sold through
3
A.S. Vorozhevich. Disputes over violations of exclusive
rights to trademarks in marketplaces. “Journal of the
Intellectual Property Rights Court”, No. 2 (32), June 2021, -
P.133.
4
Kostyrev A., Shchurenkov N. Counterfeit is a stubborn thing
// Kommersant 2019. July 8. No. 117/P.
43
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
marketplace platforms increased by 20 percent
5
. Of
the virtually sold goods, 35% are children's toys, 29% are
clothes and shoes, 17.5% are headphones, chargers,
covers and other small household goods and
accessories for them, 12.5% are household chemicals,
10% are perfumes
6
. In addition, based on the results of
studying this issue by BrandMonitor, it was found that
more than 70% of products sold on the platform of 50
different marketplaces in Russia are counterfeit and
introduced into civil circulation in violation of
trademark and service mark rights
7
.
It is worth emphasizing that trading through
marketplaces should not be confused with trading
through regular domains. As you know, in Uzbekistan
there are such electronic trading platforms as
Texnomart,
Elmakon,
Openshop,
Mediapark,
Goodzone, which also carry out the purchase and sale
of goods using online trading. The difference between
these trading platforms and marketplaces is that there
is no competition with this type of trading. In contrast,
when trading using marketplaces, there is intense
competition between manufacturers of goods
8
.
In the marketplace, each product manufacturer or
seller has its own content (address) in the domain. The
subjects of the marketplace are, on the one hand, an
online retailer (administrator or owner of the
marketplace), and on the other hand, a manufacturer
of goods or a seller. The ability of the consumer to
choose a product that meets his requirements from a
large variety of products creates a lively competitive
environment in this area. In other words, a
5
Danilov D.B. Porokhov M.Yu. Trademark protection in the
era of digitalization. Society and law. 2021. No. 2 (76). - P.156.
6
Hotbeds of counterfeit: Moscow wholesale markets and
Youtube bloggers develop trade in illegal goods in Russia. Its
volume exceeds 5 trillion rubles. // TiarCenter.com
[Electronic resource]. – Access mode: https://tiarcenter.
com/counterfeit/ (date of access: 01/06/2021).
7
Vopilov, Yu. Test purchase of BrandMonitor: 7 out of 10
goods in the network are counterfeit // BrandMonitor.ru
[Electronic
resource].
–
Access
mode:
marketplace is a trading platform where various types
of goods and services are located
9
.
An online retailer acts as a manager or administrator in
the marketplace, whose functional duties include
providing goods and services to the consumer for
purchase, guarantees that goods and services belong
to a specific manufacturer, and providing technical
services for creating shopping content in the domain.
At the same time, although the online retailer will
provide technical support for the creation of content,
it is not responsible to the consumer for its quality. This
is explained by the fact that his duties include only
guaranteeing that the goods belong to the
manufacturer, which implies that the products are not
counterfeit or counterfeit, guarantees for the
protection of intellectual property rights.
One of the main issues in the activity of marketplaces
today is their responsibility for violations of intellectual
property rights and the sale of counterfeit products to
end consumers. If the marketplace sells counterfeit
products of its own production, its responsibility for
these actions is inevitable, but the situation is
aggravated when selling products from other
manufacturers. In this case, the product is introduced
into civil circulation by a manufacturer who has
violated both intellectual property rights and
consumer rights. Is it possible to hold the marketplace
administrator liable in this case? If this is possible, what
share of responsibility will be imposed on the
marketplace administrator, and what share on the
manufacturer?
https://brandmonitor.ru/materials/kontrolnaya-zakupka-
brandmonitor-7-iz-10-tovarov-v-setikontrafakt/
(date
of
access: 01/03/2021)
8
Long C. Trademarks and Unfair Competition // The Oxford
Handbook of Law and Economics: Volume 2: Private and
Commercial Law. – 2017. – P.220.
9
Salnikova A.V., Kudimova Yu.A. Cotrafact to the
marketplace on the example of "Wideberry": problem
statement. Bulletin of the University No. 2, 2021. - P.118.
44
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
Under these circumstances, there may be two
versions. According to one, the marketplace
administrator knew or should have known that the
products were manufactured in violation of intellectual
property rights and counterfeit products. According to
another, the administrator did not know, and the
circumstances of the case indicate that he could not
have known about it.
In the first case, when the marketplace administrator
knew and should have known about counterfeit
products and violation of intellectual property rights,
he is subject to civil liability on a general basis, which
implies compensation for losses and moral damage.
Part one of Article 252 of the Civil Code of the Republic
of Uzbekistan provides that in case of a joint and
several obligation of debtors, the creditor has the right
to demand performance both from all debtors jointly
and from any of them separately, moreover, both in full
and in part of the debt.
A creditor who has not received full satisfaction from
one of the joint and several debtors has the right to
demand what was not received from the other joint
and several debtors.
Solidary debtors remain obligated until the obligation
is fully discharged.
Under the circumstances set forth in the second
version, the administrator's liability does not arise,
since, given that he did not know and could not know
about violations by the manufacturer, he did not have
the intent to sell counterfeit products or violate
intellectual property rights.
Thus, it can be argued that the marketplace can be held
liable jointly and severally along with the manufacturer
for the sale of goods in violation of applicable law.
However, it is necessary to analyze some points of
importance.
According to articles 11 and 1040 of the Civil Code of
Republic of Uzbekistan, measures to protect civil rights
can be applied regardless of the fault of the infringer
of intellectual property rights. Part one of Article 333 of
the same Code provides that the debtor is liable for
non-performance or improper performance of an
obligation if there is fault, unless otherwise provided
by law or the contract. The debtor is declared innocent
if he proves that he has taken all measures depending
on him for the proper performance of the obligation.
It follows from this that the marketplace administrator
performing the task of the offending manufacturer, if
his guilt is proven, is liable under the law for violating
the exclusive rights of the owner of a trademark,
service mark or copyright. This provision is not fixed by
the current legislation in the field of protection of
intellectual property rights, just as there is no concept
of an information intermediary. This creates difficulties
and ambiguities in law enforcement practice.
Article 1040 of the Civil Code of Republic of Uzbekistan
stipulates that in case of violation of an agreement on
the creation and use of the results of intellectual
activity and means of individualization, the general
rules on liability for violation of obligations are applied.
On the basis of Article 252 of the Civil Code of Republic
of Uzbekistan, in case of a joint and several obligation
of debtors, the creditor has the right to demand
performance both from all debtors jointly and from any
of them separately, both in full and in part of the debt.
However, the information intermediary that places
data on Internet resources is not responsible for
violations of intellectual property rights in the
following cases:
If he did not know and should not have known
about the infringement of intellectual property
rights;
If timely measures are taken on his part to
eliminate violations of the right after receiving an
application (objection) from the owner of
intellectual property about the violation of his
right, indicating the website address and details of
the goods placed on the marketplace platform.
45
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
Third parties providing services for the placement of
products on Internet resources are referred to as
information intermediaries.
In this regard, when considering cases of this category,
the courts should not apply to them the requirements
established for other intermediaries. This raises a very
pertinent question: Is it possible to equate the
marketplace of an information intermediary?
The current legislation does not provide an answer to
this question. However, based on the current state of
affairs, it can be argued that persons providing services
for the placement of goods and services on Internet
resources and acting on the basis of the seller's
instructions, but not participating in the auction, are
information intermediaries.
In all this process, these persons, not intentionally, but
indirectly, may take part in the commission of offenses,
but they themselves do not know this. However, this
cannot affect the court's decision on bringing to civil
liability, since, as mentioned above; ignorance of the
offense committed by the seller releases the
marketplace administrator from liability.
In accordance with Article 27 of the Law of the Republic
of Uzbekistan “On trademarks, service marks and
appellations of origin of goods”, the use of a
trademark is considered to be its use on goods for
which the trademark is registered, and (or) their
packaging by the owner of the trademark or the
person to whom such the right is granted on the basis
of a license agreement.
The marketplace, acting on the instructions of the
seller or manufacturer, facilitates the latest placement
of goods and services on the platforms of the Internet
network.
Here the following question may arise: by what criteria
can the court determine whether the marketplace
10
Vorozhevich A.S. Disputes over violations of exclusive
rights to trademarks in marketplaces. “Journal of the
knew or did not know about violations of the exclusive
rights of intellectual property owners? To get an
answer to this question, it is not at all necessary to
demand or withdraw all information about the goods
and services posted on the website, since this may lead
to the suspension of the marketplace as a business
entity or lead to excessive costs. In addition, even the
courts are not in all cases unable to accurately
determine whether there was an offense in this
particular case.
Sellers who have expressed a desire to post
information about a product on Internet resources and
a public offer for the sale of goods or the provision of
services are required to provide documents confirming
that they have a certificate of permission from the
owner of the intellectual property right or the
manufacturer to use insignia or the product as a whole.
In this regard, the failure to demand such a document
from the marketplace administrator indicates that he
knew about the violation of the exclusive rights of the
owner of intellectual property.
This raises the question of what legal relationships may
arise with sellers who do not have documents
confirming permission to use goods that operate in full
compliance with socio-economic principles.
In Russia, some marketplaces (Wildberries) allow the
use of goods for which the seller does not have
permission, provided that an application has been
submitted for obtaining the appropriate certificate,
but no response has yet been received
10
. A distinctive
feature of this case is that the filing of an application
does not yet mean the consent of the owner of the
intellectual property right. It seems that some
marketplaces take this risk in order to maximize profits
and not lose their existing clientele.
The current legislation does not contain rules
restricting such actions of the marketplace, since this is
not necessary. In this case, the entire risk associated
Intellectual Property Rights Court”, No. 2 (32), June 2021, -
P.136.
46
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
with the illegal use of exclusive rights on the part of the
sellers lies entirely with the marketplaces, which will be
joint and several debtors in the event of an offense by
the sellers.
However, this does not yet mean unnecessary
problems for marketplaces, since when concluding
agreements with sellers, they can provide for the
condition that all costs of paying damages to owners
of intellectual property rights are borne by the seller.
This will be a reliable insurance against the risk of
violations by unscrupulous sellers and will save
marketplaces from excessive spending.
Assume a situation in which the marketplace, as an
information intermediary, provides technical support
to the seller for the sale of a certain product with
violations
of
product
quality
requirements
(counterfeit) or a violation of intellectual property
rights. It should be borne in mind that when resolving
such disputes, it is necessary to proceed from each
specific situation. In particular, if the following factors
are present in the actions of the marketplace, it is
impossible to qualify its actions as an accomplice:
Firstly, the owner of the rights has the opportunity to
apply to the marketplace administrator with a
statement on the elimination of violated rights;
Secondly, the marketplace administrator must
immediately respond to the application of the owner
of the rights.
The above situation becomes sensitive when the
subject is both marketplaces that carry out purchase
and sale, and marketplaces that receive a share of
sales. At the same time, it is important to pay attention
to whether the marketplace had the opportunity to
11
Minutes No. 10 of the Meeting of the Working Group of the
Scientific Advisory Council at the Court for Intellectual
Property
Rights
April
22,
2015
//
http://ipcmagazine.ru/official-cronicle/protocol-10-of-the-
meeting-of-the- scientific-advisory-council-at-thecourt-for-
intellectual-property-right
independently place, correct, make changes and
additions to the posted materials, and also whether it
has a material interest in placing materials that violate
intellectual property rights or consumer rights,
knowing about it.
The Russian Intellectual Property Court, when
prosecuting mediators of information on Internet
platforms, considers it necessary to take into account
the following circumstances:
First, as a source of income, there should be the actions
of an information intermediary, which consists in
ensuring the placement of materials about the product
on the Internet and free access of potential consumers
to this information;
Second, the person whose actions place the
information on the Internet, that is, the marketplace
administrator or a third party. This circumstance can be
verified only after the information has been posted
11
.
An even more conceptual idea was put forward by a
judge of the Russian Intellectual Property Court,
according to which it is necessary to distinguish sites
that provide technical assistance in posting
information about goods from sites that directly post
information on the Internet.
According to the judge, if the intermediary does not
participate in the conclusion of the contract and
cannot influence its terms, he should be recognized as
an intermediary of information, however, if his role is
much larger and he participates as a party in
contractual relations, then he is an intermediary
12
.
So, if you follow the above thought, then marketplaces
can be given the following definition:
12
Minutes No. 10 of the Meeting of the Working Group of the
Scientific Advisory Council at the Court for Intellectual
Property
Rights
April
22,
2015
//
http://ipcmagazine.ru/official-cronicle/protocol-10-of-the-
meeting-of-the- scientific-advisory-council-at-thecourt-for-
intellectual-property-right
47
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
a)
Provides services for direct participation in the
placement of data on the Internet, making changes
and additions to the bottom, adjustments,
advertises products;
b)
Participates in the conclusion of sales contracts,
prevents the introduction of counterfeit products
into civil circulation and organizes relationships
with consumers;
c)
Non-recognition as an intermediary of information
of persons participating in the sale and purchase of
goods on the basis of shared profit as the main goal
of their activities. Accordingly, they cannot apply
the rules on the responsibility of intermediaries of
information.
These criteria for determining marketplaces are
advisory in nature, and therefore, the court, when
considering cases related to disputes in this category,
may be guided by the specific circumstances of the
case.
Absolutely appropriate is the question of what
measures and actions should the marketplace take
when accessed by the owner of the rights? Civil law
stipulates that if an information intermediary has taken
all measures in his power, then he is exempt from
liability.
In addition, the information intermediary must request
from the seller documents evidencing permission to
use the right, as well as provide detailed information to
the owner of the rights about the offender. Also, the
information intermediary is obliged to remove from
the site the posted information about goods and
services, during the use of which a violation of the right
was made.
In Uzbekistan, the legal status of the marketplace has
not been defined, the procedure for the operation of
this type of online trading has not been regulated, and
there is no judicial practice on disputes in this category.
However, in foreign countries this type of trade is
13
Tiffany No.04 Civ. 4607 at 1.
regulated at the legislative level, and there is also an
established judicial practice of law enforcement in this
area of trade.
As an example, we can cite cases considered by the
courts of various far-abroad countries.
The US court heard a dispute between Tiffany and
eBay
13
over trade violations. From the case file, Tiffany
accused eBay of infringing the exclusive right to use a
trademark. In particular, Tiffany accused eBay of
posting information about counterfeit products on its
website and thereby helping to sell them to
consumers. Tiffany said eBay has been warned against
counterfeiting and could be subject to scrutiny. To this
statement, eBay responded with the objection that
only the owner of the exclusive right, and not the
marketplace, has the right to monitor counterfeit
goods. Based on the circumstances of the case, the
court concluded that the arguments of the eBay
company were reasonable and considered that the
company did not know and could not know about the
counterfeit goods. In addition, the facts established by
the court revealed that eBay did not commit violations
of the rules of trade, and if there were sufficient
grounds, all measures would be taken to prevent them.
The strong evidence in the case was the development
and implementation by eBay of the information system
VeRO, which allows timely detection of counterfeit
products.
However, when the case involving the same eBay
14
company was considered by the same court, it showed
that the information system VeRO developed and
implemented by this company turned out to be
ineffective and did not give the expected results.
As another example, a French court heard a lawsuit
filed by Louis Vuitton against eBay for trademark
infringement. At the trial, the plaintiff accused eBay of
creating conditions for third parties to sell counterfeit
goods. Based on the results of the consideration of this
14
1 SA Louis Vuitton Malletier v eBay Inc and eBay
International [2010] E.T.M.R.10.
48
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
case, the French court, unlike the US court, took the
side of the plaintiff - “Louis Vuitton” and determined
that the measures taken by eBay to prevent the
posting of information about counterfeit products on
the site were ineffective. The court concluded that the
defendant should not act as a market participant, but
should assist its subjects as an intermediary. In this
regard, the defendant violated the norms of the law on
the protection of intellectual property rights and he is
liable.
Similarly, a French court, in another case in which
eBay
15
was sued, ruled that eBay be held liable in
solidarity with the seller, Hermes International v Cindy
Feitz, for infringement of the owner's intellectual
property rights.
In 2011, the European Court considered a case related
to the company “L’Oreal” (the owner of the right)
16
. In
the lawsuit, the owner of the right indicated that the
online store on the Internet platform sells goods in
violation of its exclusive rights. The court recognized
the online store as an information intermediary, and
therefore the owner of the right has the right to
demand that it eliminate violations. According to the
court, the courts have the right not only to demand
compensation for damage, but also to impose an
obligation to further prevent violation of exclusive
rights. The court also ruled that similar statements of
the court must be effective, proportionate, effective
and must not prevent further trading on the Internet.
If these requirements are followed, marketplaces may
be exempted from liability.
The courts of Germany and the European Court of
Justice have also considered other cases related to
disputes over infringements in the use of trademarks in
marketplaces. The case file of cases heard by these
courts in a lawsuit filed by Coty Germany GmbH against
defendant Amazon contains evidence that Coty is a
15
Hermes International v Cindy Feitz and eBay, RG
No.06/02604.
16
Vorozhevich A.S. Disputes over violations of exclusive
rights to trademarks in marketplaces. “Journal of the
perfume distributor and Davidoff is a trademark
licensee. The Amazon Marketplace is a trading network
that provides technical support for posting
information about the goods sold on the Internet.
Here, the sale and purchase agreements of the placed
goods are concluded directly between the buyer and
the seller. Amazon also offers warehousing services for
merchants. Delivery of goods to buyers is carried out
by specialized companies that are not related to the
marketplace. According to the revealed data of Coty on
the website, Davidoff was engaged in the sale of
perfumes under the name Davidoff Hot Water on the
website www.amazon.de. This violated the owner's
trademark rights. In response to these actions, Coty
demanded that Amazon immediately stop selling this
perfume. After being rejected by Amazon, Coty went
to the German Land Court, which dismissed the
lawsuit. The court found that Amazon did not use the
Davidoff trademark, but instead stored the goods on
hosted Internet resources. In turn, the European Court
also upheld the decision of the German court and
concluded that the use involves active actions, and
Amazon's actions do not show signs of violating the
exclusive rights of the trademark owner.
From the above, it can be seen that the European
courts do not have a unified approach to assessing the
actions of marketplaces in the event of a dispute with
the owners of the right, and there are also no unified
principles for assessing their activities. The activity of
marketplaces is limited only by technical assistance to
the seller in placing their goods on Internet resources.
This circumstance allows marketplaces to avoid liability
in case of violation of the rights of trademark owners.
In general, the marketplace is considered an
innovation in the national market for goods and
services and in the legal field of our legislation. It can
be considered a virtual transnational platform that
Intellectual Property Rights Court”, No. 2 (32), June 2021, -
P.139-140.
49
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
erases borders and distances, which allows you to
freely sell and purchase goods and services anywhere
in the world. It is on these grounds that the
marketplace is a complex legal process that requires
the integration and globalization of the legislative
framework of various countries.
Based on this position, you can define a marketplace as
follows:
“Marketplace is a virtual trading platform with its own
trading content for manufacturers of goods and sellers
in the domain system.”
“An online retailer is a manager who controls the
course of trading in marketplaces and guarantees that
the goods belong to a certain manufacturer.”
When conducting online bidding, an online retailer
must fulfill the following responsibilities:
Check the registration of the trademark and the
manufacturer of the goods when placing the
goods in the relevant trade content;
Determine whether there has been a violation of
the intellectual property rights of this trademark;
Provide guarantees to the consumer associated
with the risk of non-compliance with the quality of
the goods and its defectiveness;
Create conditions for a healthy competitive
environment. Avoid unequal conditions for the use
of trademarks, the use of a trademark with the
predominant use of meta tags in the domain name.
This means that it is inadmissible to grant privileges
to a certain seller in the form of the withdrawal of
goods from one manufacturer in the first place,
while goods of the same type are refilled, and there
are several sellers. For example, let's say that a
consumer has searched the laptop marketplace,
and the marketplace, granting privileges to the
seller under the “Lenovo” trademark, displays the
products of this brand first, and the remaining
trademarks after it;
Combating unfair competition. Unfair competition
in marketplaces can manifest itself in the
prohibition or coercion of the seller to perform
certain actions under the threat of removing the
domain from the content.
The online retailer must be accountable to the
consumer
and
the
competition
authority.
Responsibility comes from the considerations that the
online retailer is a guarantor of the conformity of the
quality of the product and its belonging to a certain
manufacturer to the consumer.
For the identified shortcomings of the goods sold
through the marketplace platform, along with the
seller, the online retailer should also be jointly and
severally liable, since it is the guarantor. This is due to
the fact that the consumer is not a specialist and does
not have the skills to identify counterfeit products.
Only the online retailer and the seller of the product
can know that the product is counterfeit. It is for this
reason that all responsibility should be placed on them.
REFERENCES
1.
M. Khalifa, V. Liu. Online consumer retention:
contingent effects of online shopping habit and
online shopping experience // European Journal of
Information Systems. - 2007. - T. 16. - No. 6. - P.780.
2.
P. A. Riach, J. Rich Field experiments of
discrimination in the market place // The economic
journal. - 2002. - T. 112. - No. 483. – P.F480.
3.
A.S. Vorozhevich. Disputes over violations of
exclusive rights to trademarks in marketplaces.
“Journal of the Intellectual Property Rights
Court”, No. 2 (32), June 2021, - P.133.
4.
Kostyrev A., Shchurenkov N. Counterfeit is a
stubborn thing // Kommersant 2019. July 8. No.
117/P.
5.
Danilov
D.B.
Porokhov
M.Yu.
Trademark
protection in the era of digitalization. Society and
law. 2021. No. 2 (76). - P.156.
6.
Hotbeds of counterfeit: Moscow wholesale
markets and Youtube bloggers develop trade in
illegal goods in Russia. Its volume exceeds 5 trillion
rubles. // TiarCenter.com [Electronic resource]. –
50
Volume 04 Issue 03-2022
The American Journal of Political Science Law and Criminology
(ISSN
–
2693-0803)
VOLUME
04
I
SSUE
03
Pages:
41-50
SJIF
I
MPACT
FACTOR
(2020:
5.
453
)
(2021:
5.
952
)
(2022:
6.
215
)
OCLC
–
1176274523
METADATA
IF
–
7.659
Publisher:
The USA Journals
Access mode: https://tiarcenter. com/counterfeit/
(date of access: 01/06/2021).
7.
Vopilov, Yu. Test purchase of BrandMonitor: 7 out
of 10 goods in the network are counterfeit //
BrandMonitor.ru [Electronic resource]. – Access
mode:
https://brandmonitor.ru/materials/kontrolnaya-
zakupka-brandmonitor-7-iz-10-tovarov-v-
setikontrafakt/ (date of access: 01/03/2021)
8.
Long C. Trademarks and Unfair Competition // The
Oxford Handbook of Law and Economics: Volume
2: Private and Commercial Law. – 2017. – P.220.
9.
Salnikova A.V., Kudimova Yu.A. Cotrafact to the
marketplace on the example of "Wideberry":
problem statement. Bulletin of the University No.
2, 2021. - P.118.
10.
A.S. Vorozhevich. Disputes over violations of
exclusive rights to trademarks in marketplaces.
“Journal of the Intellectual Property Rights
Court”, No. 2 (32), June 2021, - P.136.
11.
Minutes No. 10 of the Meeting of the Working
Group of the Scientific Advisory Council at the
Court for Intellectual Property Rights April 22, 2015
// http://ipcmagazine.ru/official-cronicle/protocol-
10-of-the-meeting-of-the-
scientific-advisory-
council-at-thecourt-for-intellectual-property-right
12.
Minutes No. 10 of the Meeting of the Working
Group of the Scientific Advisory Council at the
Court for Intellectual Property Rights April 22, 2015
// http://ipcmagazine.ru/official-cronicle/protocol-
10-of-the-meeting-of-the-
scientific-advisory-
council-at-thecourt-for-intellectual-property-right
13.
Tiffany No.04 Civ. 4607 at 1.
14.
1 SA Louis Vuitton Malletier v eBay Inc and eBay
International [2010] E.T.M.R.10.
15.
Hermes International v Cindy Feitz and eBay, RG
No.06/02604.
16.
A.S. Vorozhevich. Disputes over violations of
exclusive rights to trademarks in marketplaces.
“Journal of the Intellectual Property Rights
Court”, No. 2 (32), June 2021, - P.139-140.
