Advocate General Szpunar has issued an opinion inCases C-148/21 and C-184/21 – Louboutin v Amazon – concerning online sales of counterfeit goods. He concluded that the specific features of Amazon’s business practices do not support a finding that a sign identical to a trade mark has been used within the meaning of EU law.
He also said in his Opinion in Cases C-148/21 and C-184/21 that although Amazon’s commercial offering includes services ranging from the publication of offers for sale to the shipping of goods, an online intermediary cannot be held directly liable for infringements of the rights of trade mark owners taking place on its platform as a result of commercial offerings by third parties.
The background
The Amazon group is both a well-known distributor and the operator of a marketplace. It publishes on its online sales website advertisements relating to its own goods, which it sells and ships under its own name, as well as advertisements from third-party sellers. Furthermore, it offers third-party sellers additional services such as stocking and shipping goods advertised on its platform while informing potential purchasers that it will be responsible for those activities.
Mr Christian Louboutin is a French designer of footwear whose best-known goods are high-heeled women’s shoes. The red outer sole, for which they are known, is registered both as an EU and a Benelux trademark.
The Amazon websites regularly display advertisements for red-soled shoes which Mr Louboutin claims relate to goods which have been placed on the market without his consent. He brought two actions in in Luxembourg and Belgium against Amazon, claiming that Amazon had used a sign that is identical to the trade mark of which he is the proprietor for goods or services which are identical to those for which the trade mark in question is registered. He particularly emphasised the fact that the advertisements at issue form an integral part of Amazon’s commercial communication.
In the context of an assessment of Amazon’s hybrid business model, the two referring courts asked, in particular, whether the operator of such an online sales platform can be held directly liable for the infringement of the rights of trade mark proprietors on its platform.
The Opinion
In his Opinion, Advocate General Maciej Szpunar clarified the concept of ‘use’ of the trade mark by an online intermediary, which, in his view, should be applied from the perspective of a user of the platform in question. He said that EU case law makes clear that the act of use by an internet intermediary presupposes, ‘at the very least, that that third party uses the sign in its own commercial communication’.
The Advocate General considers that that condition is met where the addressee of that communication makes a specific link between the intermediary and the sign. Such a condition must be assessed from the point of view of the user of the platform, to enable an assessment of whether the sign appears to that user to be integrated into that commercial communication.
In his view, the perception of a reasonably well-informed and reasonably observant user of an online sales platform should be considered when determining whether a sign is used in the commercial communication of the operator of that platform.
Furthermore, regarding the impact of Amazon’s business practices on the recognition of ‘use’ of the trade mark within the meaning of EU law, the Advocate General noted that the only situation envisaged was where the operator of an online sales platform is directly liable for its use of a sign identical to a trade mark. In addition, while noting that the commercial offerings of third parties and of Amazon are presented uniformly and that each includes the logo of Amazon, the Advocate General said that the advertisements always specify if the goods are sold by third-party sellers or sold directly by Amazon.
Therefore, the mere fact that Amazon’s advertisements and those from third-party sellers appear next to each other does not mean that a reasonably well-informed and reasonably observant internet user might perceive the signs displayed on the advertisements of third-party sellers as an integral part of Amazon’s commercial communication. The same applies to the additional services of assistance, stocking and shipping of goods bearing a sign identical to a trade mark, for which Amazon has also actively contributed to the preparation and publication of the offers for sale.
The Advocate General believes that, in those circumstances, the operator of an online platform such as Amazon does not use a sign.
