STATEMENT OF CLAIM

As representative for Louis Vuitton Malletier S.A (”Louis Vuit-

ton”)

we hereby summon 1 Christine Holm (”Respondent 1”)

and

2 Finn.no (”Respondent 2”)

To appear as respondents before the Arbitral Tribunal which is respectfully re-

quested to order that:

2

Claims:

Respondent 1

Claim 1:

Respondent 1 shall be prohibited from importing, selling

and marketing the handbag shown in Exhibit 2 marked

with the trade mark shown in Exhibit 1 without the con-

sent of Louis Vuitton, including through advertisements

on the website Finn.no.

Claim 2:

Primary claim: Respondent 1 shall destroy the 13 bags in Respondent

1's possession for Respondent 1’s own costs and forward

documentation of the destruction to Louis Vuitton.

Alternatively: Respondent 1 shall deliver the 13 bags in Respondent

1's possession to Louis Vuitton for the purpose of de-

struction for Respondent 1’s own costs.

Claim 3:

Respondent 1 shall pay EUR 4,879 to Louis Vuitton or al-

ternatively a smaller amount estimated by the Arbitral

Tribunal.

Respondent 2

Claim 1:

Respondent 2 shall remove Respondent 1’s advertise-

ment of the 13 handbags shown in Exhibit 2 marked

with the trademark shown in Exhibit 1 without the con-

sent of Louis Vuitton from the website Finn.no.

Claim 2:

Respondent 2 shall pay EUR 4,180 or alternatively a

smaller amount estimated by the Arbitral Tribunal.

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Particulars of claim:

Louis Vuitton is a French company founded in 1954 that produces and distributes

luxury products ranging from key chains to the famous monogram canvas bags.

Louis Vuitton is one of the world’s largest and most luxurious companies and oper-

ates under the Louis Vuitton Möet Hennessey (LVMH) group. The company has a

very strict policy which only allows them to distribute their products through exclu-

sively appointed retailers that only employ specially trained personnel. Therefore,

the consumer can be sure that the product is original if it is bought in a Louis Vuit-

ton store.

Louis Vuitton markets their products around the world as a symbol of prestige and

extravagance and strives to achieve perfection in their craftsmanship. Their prod-

ucts are characterized by the “LV” monogram, see Exhibit 1, and Louis Vuitton has

registered the figure mark “LV” and the word mark “Louis Vuitton” in the Nice classi-

fication 18 for bags. In Exhibit 3 Louis Vuitton encloses the registrations in the other

Nordic countries.

Louis Vuitton knows that their products are extremely popular and are especially

aware of counterfeit products. Consequently, they have established a counterfeit

surveillance department, which quickly became aware of Respondent 1’s advertise-

ment on the website Finn.no. The advertisement showed a picture of the trade mark

registered monogram “LV” on a bag which is identical to Louis Vuitton's famous

“Speedy” bag. Louis Vuitton is almost certain that the products are counterfeit. For

the purpose of comparing, Louis Vuitton encloses Exhibit 2, showing Respondent 1’s

bag and the original Louis Vuitton “Speedy” bag. The retail price of the original

“Speedy” bag size 30 is EUR 463.

Louis Vuitton immediately contacted Respondent 1 who explained that she had

made a good buy in Portugal of 15 Louis Vuitton bags at 25% of the retail price of

the original “Speedy” bag. Respondent 1 furthermore explained that she got "suspi-

cious because of the unusually low prices" [our underlining], but the shopkeeper

had informed her that the bags were bought from a bankruptcy estate of another

shop. This convinced her that the products were indeed original. Respondent 1 ex-

4

plained that she had purchased one bag for herself and got the idea that her friends

would want similar bags. She also thought that she would be able to sell 10 more

bags in Norway.

The following day Respondent 1 had returned to the shop and bought 5 more bags

for her friends and asked the shopkeeper to send 10 bags to her address in Norway.

She planned to sell all the bags at a higher price than what she paid herself. Re-

spondent 1 explained that “she was a little bit nervous when she passed the Norwe-

gian Customs”.

Respondent 1 informed Louis Vuitton that she had already sold two of the bags to

her friends for 30% of the retail price of the “Speedy” bag. The remaining bags were

advertised on the website Finn.no for 40% of the retail price. Finn.no is a Norwegian

website that provides the possibility of uploading advertisements with the purpose

of selling all kinds of goods, for example: cars, bicycles, apartments and small

goods.

After hearing her explanation, Louis Vuitton demanded that she destroy the prod-

ucts or alternatively hand them over to Louis Vuitton without any compensation. Re-

spondent 1 denied the requests, but suggested that she "remove the tags bearing

the Louis Vuitton trade mark" from the bags. Furthermore, she suggested that she

could “insert a notice in the advertisement stating that is was not an original prod-

uct”. Louis Vuitton was not satisfied with these suggestions and in order to stop the

infringement of the trade mark registered monogram “LV” they contacted Respon-

dent 2, who is the operator of the website Finn.no, and demanded that Respondent

2 remove the advertisement from the site. Unfortunately, Respondent 2 denied.

Allegations:

The Respondents’ actions have mainly taken place in Norway which is not a member

of the European Union, but a member of the European Economic Area. However, the

parties have agreed to apply Directive 2008/95/EC to approximate the laws of the

5

Member States relating to trade marks ("Trade Mark Directive") and the general

principles of Nordic trade mark law, and these will be referred to in the following.

According to Article 1 of the Trade Mark Directive, a trade mark is valid if it is regis-

tered in a Member State. The registration of the trade mark gives the proprietor ex-

clusive rights to prevent all third parties not having his consent from using, in the

course of trade, signs which are identical with the trade mark in relation to goods or

services which are identical with those for which the trade mark is registered, cf. Ar-

ticle 5(1) in the Trade Mark Directive.

With reference to the facts stated in the particulars of claim, it is beyond doubt that

the Louis Vuitton word mark and figure mark (Exhibit 1) enjoy a reputation in the

Community, cf. joined cases C-236/08-238/08, Google v Louis Vuitton Malletier SA

etc., para 28 ("Google") enclosed as Exhibit 4. This means that the trade mark en-

joys protection pursuant to Article 5(1) as well as Article 5(2) in the Trade Mark Di-

rective.

1. Respondent 1

1.1 Infringements

1.1.1 Import, sale and marketing of the counterfeit bags

It is submitted that Respondent 1’s import, sale and marketing of the counterfeit

bags marked with the “LV” monogram constitutes an infringement of Louis Vuitton´s

trade mark rights cf. Article 5(1)(a) in the Trade Mark Directive, cf. Article 5(3).

For the purpose of comparing the counterfeit bag with the original Louis Vuitton

“Speedy” bag, Louis Vuitton encloses Exhibit 2, which displays the two bags. The

monogram used on the counterfeit bags is clearly identical with Louis Vuitton’s trade

mark and it is used in relation to goods for which the trade mark is registered, cf.

Article 5(1) in the Trade Mark Directive.

Therefore, it is only relevant to discuss whether Respondent 1 has imported, sold

and marketed the counterfeit bags "in the course of trade", cf. Article 5(1) in the

Trade Mark Directive.

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1.1.2 “In the course of trade”

In support of Louis Vuitton’s claim it is hereby submitted that Respondent 1's im-

port, sale and marketing of the counterfeit bags constitute "use" of the “LV” mono-

gram "in the course of trade".

In case C-206/01, Arsenal Football Club v Matthew Reed (“Arsenal”), para 40, the

European Court of Justice ("ECJ") held that: “The use of a sign identical with a

trademark constitutes use in the course of trade where it occurs in the context of

commercial activity with a view to economic advantage and not as a private matter”

[our underlining]. A copy of the judgment is submitted as Exhibit 5.

It must be deducted from “Arsenal” that commercial activity and economic advan-

tage are important factors when deciding whether a trade mark is used in the

course of trade. In “Arsenal” a salesman offered and sold merchandise under the

trade mark registered words “Arsenal” and “Arsenal Gunners” in front of Arsenal

Football Club’s stadium. The trade marks were used in the context of sale and ECJ

found that it was obviously not intended for purely descriptive purposes, cf. “Arse-

nal”, para 55. A sale and the offering of unofficial goods for sale were considered a

commercial activity and the salesman clearly had the intention of economic gain.

Therefore, it constituted an infringement of Arsenal Football Club’s trade mark

rights.

“Arsenal” does not establish the borderline between private matters and commercial

activity. However, a guideline has been pointed out in the opinion of Advocate Gen-

eral Poiares Maduro in “Google”, para 75, see Exhibit 6. Under reference to “Arse-

nal”, the Advocate General states that the course of trade-condition “is satisfied

whenever the use is made as a commercial activity with the view to gain".

As stated in “Arsenal”, the sale and offering of goods are considered a commercial

activity. In this respect, the number of goods marketed and must be considered ir-

relevant. Therefore, the marketing and sale of a few goods must be enough to con-

stitute commercial activity in regards to Article 5(1) in the Trade Mark Directive.

7

Subsequently, the term “in the course of trade” must be defined as a commercial

activity with the intention of sale and hereby economic gain.

Based on the above, the use of the “LV” monogram in relation to the import, sale

and marketing of the counterfeit bags must be considered to be “in the course of

trade” due to Respondent 1’s intention of gaining an economic advantage when sell-

ing and marketing the bags. According to the Trade Mark Directive Article 5(1)(a),

Respondent 1’s actions therefore constitute an infringement of Louis Vuitton’s trade

mark rights.

1.2 Respondent 1’s removal of the tags

When Louis Vuitton contacted Respondent 1, she suggested the possibility of remov-

ing the tags bearing the Louis Vuitton trade mark.

However, Respondent 1 is unclear about which tags she wants to remove. Louis

Vuitton assumes that Respondent 1 does not mean the removal of the monogram

from the counterfeit bags, as this will ruin the bags. Louis Vuitton therefore as-

sumes that the counterfeit bags are sold with some kind of paper price tag or an-

other kind of appendage, which is removable from the bag. Alternatively, the tag

reference may indicate a golden metallic Louis Vuitton signature plaque, which is

sewn onto some Louis Vuitton bags, see Exhibit 7.

The original “Speedy” bag does not have any tags, but if this is the case with Re-

spondent 1’s counterfeit bags, Louis Vuitton states that the removal of these tags

does not make the future marketing or sale of the counterfeit bags in question non-

infringing, since the counterfeit bags themselves are covered by the LV monogram,

see Exhibit 2. Therefore, the consumers will still have the impression that the coun-

terfeit bags originate from Louis Vuitton. For that reason Louis Vuitton is right to

decline this suggestion.

1.3 Respondent 1’s notice stating that the bags were not original products

Louis Vuitton also declines Respondent 1’s second suggestion about inserting in the

advertisement a notice stating that the products are not original.

8

As mentioned above, the Louis Vuitton trade mark has a reputation around the

world and, therefore, enjoys protection pursuant to Article 5(1) as well as Article

5(2) in the Trade Mark Directive.

By stating that the products are not original products, there is no likelihood of con-

fusion. Nevertheless, it is submitted that the use of the trade mark would still be

detrimental to the distinctive character and the repute of the mark, cf. Article 5(2)

in the Trade Mark Directive.

In C-487/07, L’Oreal v Bellure (“L’Oreal”) (Exhibit 8), ECJ defined the content of Ar-

ticle 5(2) in the Trade Mark Directive. According to ECJ, “the detriment to the dis-

tinctive character of the mark is caused when the mark’s ability to identify the

goods for which it is registered is weakened since use of an identical sign by a third

party leads to dispersion of the identity”, cf. “L’Oreal” para 39.

On the other hand, “detriment to the repute of the mark is caused when the goods

for which the identical mark is used by a third party may be perceived by the public

in such a way that the trade mark’s power of attraction is reduced. This is especially

the case when a third party possesses goods of a quality, which is liable to have a

negative impact on the image of the mark”, cf. “L’Oreal” para 40.

In the present case, Respondent 1 wishes to use the trade mark on products of un-

known quality. Even if the buyer is aware that the bag does not originate from Louis

Vuitton, the next buyer does not have the same knowledge. Due to the identical imi-

tation of the “LV” monogram, the next buyer may be convinced that the bag origi-

nate from Louis Vuitton, cf. “Arsenal” para 57 (Exhibit 5). If the quality of the coun-

terfeit bag is not as good as the original Louis Vuitton bag, it will definitely have a

negative impact on the image of Louis Vuitton.

The emergence of a large number of counterfeit products reduces the consumer’s

interest in Louis Vuitton’s products. Louis Vuitton markets their products as being

exclusive and this image is being jeopardized by the large number of counterfeit

products. The fact that Respondent 1 in her advertisement states that the goods are

9

not original does not change the fact that the goods reduce Louis Vuitton’s power of

attraction.

It is therefore irrelevant whether the goods are sold as originals or not originals.

The use of the trade mark still constitutes an unjustified use pursuant to Article 5(2)

in the Trade Mark Directive.

Furthermore, this action is also inconsistent with the principles of fair competition in

Directive 2006/114/EF on Misleading and Comparative Advertising (“Directive on

Misleading Advertising”). In “L’Oreal” para 73 (Exhibit 8) it is clearly stated that the

directive applies to counterfeit products and it is not a requirement that the com-

parative advertising be misleading in nature or there be a likelihood of confusion.

This supports the fact that the presentation of products as imitations is an unjusti-

fied use of another trade mark and takes unfair advantage of the distinctive charac-

ter of this mark, cf. Article 5(2) in the Trade Mark Directive.

Finally, it must be noted that Respondent 1’s removal of the tags bearing the Louis

Vuitton trade mark, and the notice stating that the bags are not original products,

does not change the fact that an infringement had already occurred when Respon-

dent 1 made these suggestions. Regardless of Respondent 1’s corrective measures,

Louis Vuitton’s trade mark rights were infringed when Respondent 1 imported, sold

and marketed the counterfeit bags and these infringements cannot be undone.

1.4 Corrective measures

Based on the above-mentioned infringements of Louis Vuitton’s trade mark rights

and with reference to Directive 2004/48/EF on the enforcement of intellectual prop-

erty rights (“Enforcement Directive”) Article 10, as implemented in the Danish Trade

Mark Act Section 44 (Exhibit 9), Louis Vuitton claims that Respondent 1 shall de-

stroy the 13 bags in Respondent 1’s possession for Respondent 1’s own costs, or al-

ternatively, deliver the 13 bags in Respondent 1’s possession for the purpose of de-

struction for Respondent 1’s own costs.

10

Respondent 1 ought to have realized that the bags were counterfeit products and

therefore Respondent 1 cannot be considered as being a consumer in good faith.

Hence, the corrective measures are proportional compared to Respondent 1’s ac-

tions, cf. the Danish Trade Mark Act Section 44(4).

1.5 Damages

According to the Enforcement Directive Article 13, as implemented in the Danish

Trade Mark Act Section 43, it is possible to claim damages when the trade mark has

been infringed by intent or negligent behaviour.

Ordinary negligence is based on a principle of what the infringer reasonably ought to

have known. The term is closely connected to the concept of good faith and nor-

mally, the requirement of negligence is easily fulfilled, see “Retshåndhævelse af

immaterialrettigheder”, Andersen/Carlquist/Rubinstein, 2006 edition, page 438 (Ex-

hibit 10).

Respondent 1 bought the counterfeit bags in a small shop at the beach in Portugal.

As mentioned, Louis Vuitton is an exclusive brand and it is well-known that they

only sell their products through highly-fashionable shops. It should have been obvi-

ous for Respondent 1 that original Louis Vuitton bags are not sold in a small shop at

the beach.

The fact that Respondent 1 asked the shopkeeper about the bags originality indi-

cates that she had doubts about the origin of the bags. In addition, Respondent 1

explained that she was nervous in Norwegian Customs. If Respondent 1 had fully

believed the shopkeeper’s explanation about having bought the goods from a bank-

ruptcy estate, she would have had no reason to act nervously around the customs

officials in Norway.

Furthermore, the price was 25% of the retail price (EUR 115), and if the bags origi-

nated from a bankruptcy estate the shopkeeper would probably want to sell the

bags at a much higher price generating as much profit as possible. Therefore, the

11

unusually low prices should have created suspicion that the bags were not original

Louis Vuitton bags.

Based on these facts, Respondent 1 ought to have realized that the bags were coun-

terfeit products and therefore she has acted negligently.

Even if the Arbitral Tribunal does not find that Respondent 1 has acted negligently

by importing and selling the bags, she must be considered to be in bad faith when

her friends refused to buy the bags on suspicion of the bags not being original.

Therefore, Respondent 1 has definitely acted negligently from this point by not re-

moving the advertisement from Finn.no and is liable to pay damages.

1.5.1 Reasonable royalty

Louis Vuitton is entitled to an equitable remuneration for the exploitation of their

trade mark. This is supported by the Enforcement Directive Article 13, as imple-

mented in the Danish Trade Mark Act Section 43(1)(1).

It is not a requirement that the goods have been marketed or that the proprietor of

the trade mark can prove a loss in a traditional sense.

It is a fact that Louis Vuitton never grants licenses, and this has been stated by a

supervisor of the Danish Louis Vuitton Company in SHD V-11-05, Chanel SA and

Louis Vuitton v Analiza Medgyesi (“Chanel”) page 6, see Exhibit 11. The fact that

Louis Vuitton normally does not allow the trade mark to be used by others, only

substantiates a requirement of a significant royalty for the unjustified use, see Ufr

2007.1941, SH Rolls-Royce PLC and Rolls-Royce Motor Cars Ltd. v PR Chokolade A/S

(“Rolls Royce”) page 3, see Exhibit 12.

It is submitted that Louis Vuitton is entitled to a hypothetically fixed license fee, as

the Copenhagen Maritime and Commercial Court awarded in “Chanel” (Exhibit 11)

where the royalty was set at 25% based on the retail price of the original Louis Vuit-

ton products. In “Chanel” the goods were not yet marketed.

12

Respondent 1 only sold 2 bags but marketed 13 bags. Therefore, the trade mark has

been used in relation to all 15 bags. On this basis, Louis Vuitton demands that they

be awarded a reasonable royalty of 25% for all 15 bags. The reasonable royalty

must be calculated on the retail price of the original bags.

As the retail price for an original Louis Vuitton “Speedy” bag size 30 is EUR 463, the

reasonable royalty must be set at a total amount of EUR 1,736.

1.5.2 Loss of profit

The counterfeit bags have the ability to dislodge Louis Vuitton’s original bags from

the market, due to the fact that the counterfeit bag is identical to the original bag.

Therefore, the consumer gets the impression that the bag originates from Louis

Vuitton. Even if the buyer is aware that it is a counterfeit product, the counterfeit

product might dislodge the original bag because of the low price.

Furthermore, the consumer who buys a counterfeit bag for EUR 139 would probably

not mind paying EUR 463 for an original bag. When the consumer buys the counter-

feit product she refrains from buying an original Louis Vuitton bag and this leads to

a loss of sale for Louis Vuitton. In this respect it is stated to be enough that Louis

Vuitton had the potential of selling one of their original bags, see “Retshåndhævelse

af immaterialrettigheder”, Andersen/Carlquist/Rubinstein, 2006 edition, page 465,

note 79 (Exhibit 13).

Therefore, the two counterfeit bags that Respondent 1 sold to her friends substitute

the original Louis Vuitton bags and have unlawfully displaced the original bags by

taking advantage of the Louis Vuitton trade mark.

The profit of an original Louis Vuitton “Speedy” bag size 30 is around half of the

sales price, thus EUR 231.50. Louis Vuitton has therefore sustained a loss of profit

of EUR 463, which they should be compensated for, cf. the Danish Trade Mark Act

Section 43(1)(2).

13

1.5.3 Disturbance of the market

Respondent 1 buys, imports and resells the counterfeit bags at a very low price. The

original Louis Vuitton “Speedy” bag is expensive and when low-priced counterfeit

products enter the market, the consumer tends to buy the discounted product - the

counterfeit product. The owner of the trade mark and hence the seller will find it

hard to remain on the market with those low prices and may have to lower prices in

order to compete with the counterfeit products. The consumer often does not focus

on the quality that comes with buying an original Louis Vuitton bag, but focuses on

the price.

Furthermore, Respondent 1’s counterfeit bags might be of poor quality, which will

influence the consumer’s view of Louis Vuitton. If resold, the next consumer could

be misled to think that this is an original Louis Vuitton “Speedy” bag and hence be

misled regarding the quality of the product.

Last but not least, the selling of counterfeit Louis Vuitton bags will in the end de-

stroy the image of Louis Vuitton. Louis Vuitton stands for luxury, prestige and ex-

travagance and when a large amount of counterfeit products are available on the

market, the consumer no longer feel the need to buy the original bag. The counter-

feit market will subsequently ruin Louis Vuitton’s image.

The Arbitral Tribunal should therefore set an estimated compensation for the distur-

bance of the market of EUR 670, cf. the Danish Trade Mark Act Section 43(1)(2).

1.5.4 Non-economic damage

According to the Danish Trade Mark Act Section 43(3), the proprietor can be com-

pensated for non-economic damage to the trade mark.

As stated above, Respondent 1 has acted negligently and has consequently ruined

the image of Louis Vuitton by importing, selling and marketing counterfeit bags at a

very low price. It has also had a negative impact on the trade mark’s exclusivity.

14

In Ufr 1996.1093 V, Danmarks Radio and KREA A/S v VN Legetøj A/S (“Danmarks

Radio”) (Exhibit 14), the Danish High Court acknowledged a compensation amount-

ing to EUR 2,684 for non-economic damage as the products had been marketed.

Furthermore, in “Rolls Royce” (Exhibit 12), the Danish Supreme Court placed em-

phasis on the fact that the infringer had used another trade mark’s reputation of be-

ing especially prestigious and luxurious.

The counterfeit bags have been marketed and therefore contribute to the large

amount of counterfeit products. By selling and marketing counterfeit bags marked

with the “LV” monogram, Respondent 1 has used Louis Vuitton’s trade marks repu-

tation and this may have a negative impact on the image and thereby on the future

sale of the original Louis Vuitton bags.

Louis Vuitton therefore claims EUR 670 in non-economic damages.

1.5.5 Damages for expenses to surveillance of the market

Because of the increase in Louis Vuitton counterfeit products, it has been necessary

to set up a counterfeit surveillance department. It is actions like the ones of Re-

spondent 1 that has forced Louis Vuitton to establish a department with the sole

purpose of monitoring the counterfeit market. It is important to set an example in

the case of infringers of counterfeit products and make them liable for expenses re-

lated to counter measures such as general surveillance.

Such expenses must be considered a foreseeable result of Respondent 1’s actions.

Without counterfeit products there would be no need for the department. Louis Vuit-

ton therefore claims that Respondent 1 should be ordered to pay EUR 1,340 to cover

the general expenses connected to the establishment and maintenance of the coun-

terfeit surveillance department cf. the Danish Trade Mark Act Section 43(1)(2).

Louis Vuitton acknowledges that the damages for these expenses might not be set

in high numbers, but the mere fact that Respondent 1 is ordered to pay damages

sets out an important example.

15

Louis Vuitton claims that the Respondents’ are joint and severally liable to pay a

reasonable royalty, disturbance of the market, non-economic loss and damages for

expenses for surveillance of the market.

2. Respondent 2

2.1 Infringements

2.1.1 Direct infringement

It is submitted that Louis Vuitton’s trade mark has been infringed, since a sign iden-

tical to the trade mark has been used in the course of trade and in relation to goods

for which the trade mark is registered, cf. Article 5(1) in the Trade Mark Directive.

The question in this case is whether Respondent 2 has “used” the trade mark as set

out in Article 5 in the Trade Mark Directive.

Every time an advertisement is created on Respondent 2’s website, the advertiser is

required to pay NOK 25 to Respondent 2. Hence, Respondent 2 obtains an income.

It is also possible for the advertiser to highlight an advertisement or to open up a

virtual shop (Åpne din egen butikk på torget) on the website for an additional

amount. Once created, Respondent 2 categorises the advertisement according to its

content, see Exhibit 15.

Respondent 2 also facilitates a search mechanism, making it is possible for the con-

sumer to find an advertisement by typing in a certain phrase, e.g. "Louis Vuitton".

See also another example Exhibit 16. Likewise, Respondent 2 offers help to con-

sumers and advertisers through its customer service.

Based in these facts, Respondent 2 is an active participant in the offering and sale

of goods advertised on the Respondent’s website. Respondent 2 contributes to es-

tablishing the connection between the consumer and the advertiser by increasing

the attention on some advertisements using highlights. Furthermore, Respondent 2

processes and categorises the advertisements to make it easier for the consumers

to find what they are looking for. Respondent 2 does not merely put the website at

the advertiser’s disposal with no further involvement. Respondent 2 is involved from

16

the moment the advertisement is uploaded on the website to the conclusion of the

sale. During the sale it is even possible to get help and guidance through Respon-

dent 2’s customer service.

Consequently, the trade mark is “used” by Respondent 2 and thus covered by the

wording of Article 5 in the Trade Mark Directive.

2.1.2 Contributory infringement

If the Arbitral Tribunal does not find that Respondent 2’s actions are covered by Ar-

ticle 5 of the Trade Mark Directive, Respondent 2 must, according to general princi-

ples of contributory infringement, be considered to have contributed to Respondent

1’s use of the trade mark.

The general principles of contributory infringement can be inferred from the princi-

ples in Danish Tort law and Danish Criminal law. In order to establish contributory

infringement it is a requirement that the person committing the contributory act is

acting negligent.

Respondent 2 should have removed Respondent 1’s advertisement immediately

when becoming aware of its illegal content and by failing to do so, Respondent 2 has

acted negligently and has not shown the required vigilance.

It must also be considered whether Respondent 2 had an obligation to monitor the

website. In Ufr 1996.209/2 H, Rigsadvokaten v KUPON-NYHEDERNE A/S (“KUPON-

NYDERNE”), the Danish Supreme Court stated that it lies with the publisher of KU-

PON-NYHEDERNE to review the magazine with the purpose of detecting illegal activi-

ties, see Exhibit 17. In KUPON-NYHEDERNE the publisher should have realized that

some of the advertisements were illegal. The Supreme Court highlights the fact that

a review of the magazine before publishing it should be a routine. By not doing so,

KUPON-NYHEDERNE had acted negligently.

17

It must be deduced from “KUPON-NYHEDERNE” that companies, who offer the pos-

sibility of advertising in return for payment, are obliged to supervise the website,

magazine etc., before publishing it.

As operator of the website Finn.no, Respondent 2 should supervise the advertise-

ments on Finn.no when they are uploaded and by not doing so they have acted neg-

ligently from the moment Respondent 1’s advertisement was uploaded. It is only

reasonable to expect that an operator of a website sets up some kind of surveil-

lance.

The general principles for contributory infringement provides for liability for offering

or supplying of means for infringements of trademarks. Respondent 2 sets the web-

site at the advertisers’ disposal and therefore contributes to the infringement. Based

on the above, Respondent 2 should have monitored Finn.no and must therefore be

liable for infringement from the moment Respondent 1’s advertisement was up-

loaded.

2.1.3 Directive on Electronic Commerce

Since Respondent 2 plays an active role, the Directive 2000/31/EC on certain legal

aspects of information society services, in particular electronic commerce, in the In-

ternal Market (“Directive on electronic commerce”) does not apply. Consequently,

Respondent 2 is not entitled to invoke the exemptions of liability in Articles 12-15

since the exemptions of liability only apply when the activity of the information ser-

vice internet provider is limited to the technical process of operating, see recital 42

in the Directive on electronic commerce.

Alternatively, if the Arbitral Tribunal finds that Respondent 2 does not play an active

role but merely puts the website at the advertisers ’ disposal, it is submitted that

Respondent 2 falls within the scope of the Directive on electronic commerce but

does not enjoy the protection of Article 14.

Article 14 in the Directive generally applies to Respondent 2, since advertisements

are hosted by Respondent 2 on request of the advertisers. According to this article

18

the service provider “is not liable for the information stored if he does not have ac-

tual knowledge of illegal activity and is not aware of facts from which the illegal ac-

tivity is apparent”. However, the service provider is liable as soon as the service

provider obtains knowledge of the illegal activity and fails to remove the information

from the website. The removal of the illegal activity must be immediate, cf. Article

14(1)(b).

Consequently, from the moment Louis Vuitton called attention to the illegal activity

in the advertisement Respondent 2 did not enjoy the protection of Article 14. Re-

spondent 2 is therefore not exempted from liability.

Accordingly, Respondent 2’s actions constitute an infringement according to Article 5

of the Trade Mark Directive, alternatively according to the general principles of con-

tributory infringement.

2.2 The claim of injunction

As stated above, Respondent 2 is liable for the infringement of Louis Vuitton’s

trademark. Alternatively, Respondent 2 has contributed to the infringement.

On this basis, Louis Vuitton insists that the advertisement be removed from Finn.no,

cf. the Danish Trade Mark Act Section 4.

2.3 Damages

According to the Enforcement Directive Article 13, as implemented in the Danish

Trade Mark Act Section 43, Respondent 2 is liable to pay damages if Respondent 2

is considered to have acted negligently. As mentioned under contributory infringe-

ment, Respondent 2 has acted negligently.

2.3.1 Reasonable royalty

On the basis of the grounds mentioned under Respondent 1 and the fact that Louis

Vuitton never grants a license, Louis Vuitton claims that the Respondents are joint

and severally liable to pay a reasonable royalty for the unjustified use of Louis Vuit-

ton’s trade mark. As regards Respondent 2, the reasonable royalty must be based

19

on the 13 bags advertised on the website. Louis Vuitton therefore claims EUR 1,500,

cf. the Danish Trade Mark Act Section 43(1)(1).

2.3.2 Disturbance of the market and non-economic loss

Furthermore, Louis Vuitton claims damages for the disturbance of the market and

non-economic loss, which the marketing on Finn.no has lead to.

As Respondent 2 has contributed to the marketing of the bags, Respondent 2 has

also contributed to the disturbance of the market and the damages caused to Louis

Vuitton’s image of exclusivity and prestige.

Respondent 2 together with Respondent 1 is liable to pay EUR 1,340, cf. the Danish

Trade Mark Act Section 43(1)(2) and 43(3).

2.3.3 Damages for expenses for surveillance of the market

As for the establishment and maintenance of Louis Vuitton’s counterfeit surveillance

department, Louis Vuitton claims that both Respondents are liable for the expenses

incurred. In this regard, it is important for the Arbitral Tribunal to send the message

that it does not tolerate infringements of trade mark rights and that infringers are

liable whether they contribute to an infringement or independently infringe the

trademark.

The advertising of the counterfeit products enables the infringers to establish con-

tact with possible buyers and therefore plays a big role on the infringement of

trademark rights.

As the operator is to be considered a professional party, the expenses for the sur-

veillance department are foreseeable. Therefore, Respondent 2 is liable to compen-

sate Louis Vuitton for the expenses connected to the surveillance department.

The Arbitral Tribunal should compensate Louis Vuitton for the damages caused by

Respondent 2 with a reasonable amount of EUR 1,340, cf. the Danish Trade Mark

Act Section 43(1)(2).

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Presentation of evidence:

Exhibit 1: Louis Vuitton monogram

Exhibit 2: Pictures of Louis Vuitton original “Speedy” bag and Respondent

1’s counterfeit bag

Exhibit 3: Trade mark registrations

Exhibit 4: C-236/08-238/08 Google v Louis Vuitton Malletier SA etc.

Exhibit 5: C-206/01 Arsenal Football Club v Matthew Reed

Exhibit 6: C-236/08-238/08 Google v Louis Vuitton Malletier SA etc. Advo-

cate General Poiares Maduro opinions

Exhibit 7: Picture of Louis Vuitton bag with a golden metallic plate

Exhibit 8: C-487/07 L’Oreal v Bellure

Exhibit 9: The Danish Trade Mark Act

Exhibit 10: Retshåndhævelse af immaterialrettigheder, Ander-

sen/Carlquist/Rubinstein, 2006 edition, page 438

Exhibit 11: SHD V-11-05 Chanel SA and Louis Vuitton v Analiza Medgyesi

Exhibit 12: Ufr 2007.1941 SH Rolls Royce PLC and Rolls Royce Motor Cars Ltd

v PR Chokolade

Exhibit 13: Retshåndhævelse af immaterialrettigheder, Ander-

sen/Carlquist/Rubinstein, 2006 edition, page 465, note 79

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Exhibit 14: Ufr 1996.1093 V Danmarks Radio and KREA A/S v VN Legetøj A/S

Exhibit 15: Screen print from Finn.no

Exhibit 16: Screen print from Finn.no

Exhibit 17: Ufr 1996.209/2 H Rigsadvokaten v KUPON-NYHEDERNE A/S

Copenhagen, 4. October 2010

Denmark, Team 1

Michelle A. D. Hansen, Helene F. Dinesen, Pernille Hansen