The Court of Justice of the European Union (“CJEU”) has ruled that Amazon could be held liable for trade mark infringement in relation to advertisements for ‘fake’ Christian Louboutin shoes placed on its website by a third party.
This preliminary ruling, a departure from previous case law and the Advocate General’s opinion in the case, is good news for brand owners (particularly for luxury products) and may cause online platforms, offering both their own and third party products for sale, to rethink their website design.
- What was the issue?
- What was the position before this Louboutin ruling?
- What did the CJEU conclude?
- So, what does this mean for businesses?
- And what’s the position in the UK?
- How we can help
1. What was the issue?
Fake, red-soled shoes were being sold by third party vendors on Amazon’s platform, allegedly infringing Louboutin’s red sole registered EU trade mark. While Amazon was not selling the counterfeit products, they were involved in the distribution, storage and advertising of those goods. Louboutin brought infringement actions against Amazon in Belgium and Luxembourg for the alleged use by Amazon of signs identical to Louboutin’s registered EU trade mark for the sale of identical goods without Louboutin’s consent.
Louboutin initiated these proceedings to obtain recognition of Amazon’s responsibility for the offering for sale of counterfeit products on its platforms by third parties.
The case was referred by the Belgian and Luxembourg courts to the CJEU for guidance on whether Amazon could be held directly liable (under Article 9(2)(a) of Regulation 2017/1001) for “using” the Louboutin trade mark if a third party seller places adverts for counterfeit goods on Amazon’s platform, particularly in circumstances where those goods were offered for sale alongside Amazon’s own products and the shipping and handling was undertaken by Amazon (i.e. a “hybrid” business model).
2. What was the position before this Louboutin ruling?
Previously, the Belgian and Luxembourg courts had referred the matter to the Advocate General of the CJEU (AG) who delivered his opinion in June 2022. He considered previous decisions relating to online intermediaries’ liability for trade mark infringement, Google France C236/08-C239-08), L’Oreal (C-324/09) and another involving Amazon’s storage services, Coty Germany (C-567/18). In those earlier cases, the court found that there was no direct liability on the part of the online intermediaries for trade mark infringement in respect of content/products offered by third parties.
What was the opinion of the AG?
The Advocate General’s opinion was that “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”. His opinion therefore aligned …….