The Court of Justice of the European Union has ruled in the case of Louboutin v Amazon Europe Core Sàrl and others (Joined Cases C-148/21 and C-184/21). The English language version of the decision has only recently become available.
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 sends under its own name, as well as advertisements from third-party sellers. As well as this, 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.
Christian Louboutin is a French designer of footwear whose best-known goods are high-heeled women’s shoes. The res 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 action sin 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 communications.
In the context of an assessment of Amazon’s hybrid business model, the two referring courts asked 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.
Last year the Advocate General issued an opinion in the case saying that the Amazon model was not a basis for trade mark infringement, and the CJEU has now issued its ruling.
The court ruling
Contrary to the AG opinion, the Court said that Article 9(2)(a) of Regulation (EU) 2017/1001 means that the operator of an online sales website incorporating, as well as that operator’s own sales offerings, an online marketplace, may be regarded as itself using a sign which is identical with an EU trade mark of another person for goods which are identical with those for which that trade mark is registered, where third-party sellers offer for sale, on that marketplace, without the consent of the proprietor of that trade mark, such goods bearing that sign. This applies if a well-informed and reasonably observant user of that site establishes a link between the services of that operator and the sign at issue. This is especially the case where, considering all the relevant circumstances, such a user may have the impression that that operator itself is marketing in its own name and on its own account, the goods bearing that sign.
The court said that the following facts were relevant: the fact that the operator uses a uniform method of presenting the offers published on its website, displaying both the advertisements relating to the goods which it sells in its own name and on its own behalf and those relating to goods offered by third-party sellers on that marketplace; the fact that it places its own logo as a renowned distributor on all those advertisements; and the fact that it offers third-party sellers, in connection with the marketing of goods bearing the sign at issue, additional services including the storing and shipping of those goods.
As a result, the following issues were especially significant: how the advertisements were presented, both individually and as a whole, on the website; and the nature and scope of the services provided by Amazon.
The case will now return to the referring courts in Luxembourg and Belgium to decide if, on the facts, the occurrences complained of by Louboutin constitute trade mark infringement by Amazon.
