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Amazon is the largest online retailer in the world (Statista, 2022), [1] as is known, products from various brands. Louboutin, for its part, is a well-known brand of French origin, which has registered “red” soles for its footwear.[2] Louboutin argued before the national courts, and later before the Court of Justice of the European Union (CJEU), that Amazon was selling, through its platform, products with a sole similar to the one registered by that company.[3] Furthermore, the aforementioned company maintained that, in addition to the aforementioned (counterfeit) footwear, Amazon sold Louboutin products. This situation, according to the claimant, could lead to confusion among consumers, with consequent damage to the French company.
Amazon maintained that the mode of operation of the markets integrated into its online sales websites did not differ significantly from the rest of the markets and that the inclusion of its logo in the advertisements of third-party sellers did not imply that (Amazon) appropriated said advertisements.[4]
It should be highlighted that the registration of a trademark in the European Union (EU) confers on its owner exclusive rights, and grants him the right of exclusion (ius excludendi) concerning any third party that, without his consent, uses in the economic traffic any sign identical to the trademark registered in the EU.[6]
In December 2022, the CJEU understood, in a preliminary ruling, that there could be direct liability of the electronic market provider (CJEU (Grand Chamber), 2022).[7]
In his previous ruling, the Attorney General understood that Amazon was not responsible. In this regard, it held that the two referring courts raised, in particular, the question of whether Amazon, as an operator of an electronic marketplace, could be held directly responsible for the infringement of the rights of trademark owners committed in its platform. He clarifies that, unlike what happens with indirect liability, the issue of direct liability is the subject of a harmonized regime in the EU.[8]
The CJEU, in its preliminary ruling, understood that the liability of the operator of an online sales site through the Internet that integrates an electronic market could be equated to the liability of those who market signs identical to EU-registered trademarks. without your consent. This is based on the fact that users (normally informed and reasonably attentive) establish a link between the services of that operator and the sign-in question. According to the court, this occurs when, given the circumstances, users could have the impression that it is that operator who markets, himself, in his name and on his account, the products provided with that sign. [ 9]
The court also understood that it was pertinent for the electronic market operator to use a uniform mode of presentation of the offers published on its Internet site, at the same time displaying advertisements for the products it sells in its name and on its account. , and advertisements for products offered by third-party sellers in said market. This is within the framework of the marketing of products bearing the sign in question, and complementary services consisting, in particular, of the storage and shipping of said products.
According to the court, the origin of liability, then, would seem to lie in the (similar) way in which Amazon tends to promote its own and third-party products and services on its electronic marketplace.
The court cites the case “Coty Germany v. Amazon”, of April 2, 2020, in which it recalls that it did not rule on the use of a sign identical to a protected trademark when shipping products bearing that sign. In that case, the CJEU did not innovate concerning its previous jurisprudence. This is due to how the preliminary ruling was made by the Bundesgerichtshof (German Supreme Civil and Criminal Court), which meant that Amazon’s responsibility was not analyzed. In this case, a seller used the Amazon logistics system for products from the “Davidoff” perfume brand owned by Coty Germany. This argues that the products would be marketed without the seller of the perfume having the right to do so in the European Economic Area (EEA). The seller who operates in this way, through eBay, would be committing an illegal act (Antón, 2020).[10] The CJEU understood that, in this case, eBay did not “own” the products, (such as the preliminary ruling) so it had no responsibility. However, it left open the responsibility of the e-commerce platform in those cases in which this platform uses the brand in its sales operations. Such would be the case with Amazon’s logistics service.[11]
Finally, the CJEU understands that Amazon may be responsible for the sale, by third parties, of counterfeit products within its platform.
From what has been said, some brief conclusions can be reached:
Firstly, although in general the previous jurisprudence of the court itself had been oriented in the sense of the “absence of responsibility” of the operator of an electronic market, in this case, Amazon may be forced to take responsibility for the sale, for part of third parties, counterfeit products or the use of brands without authorization within its platform.
The responsibility mentioned in the previous point is based on the circumstance that the average buyer, normally informed and reasonably attentive, could not clearly distinguish when Amazon promotes its (own) products and services, and when it promotes products (and brands) of third parties.
The responsibility of third-party counterfeiters (of the “Louboutin” brand, in this case) could be extended to Amazon because the “confusion” of consumers would lead them to understand that Amazon also “makes use” of said brand itself.
Since this is a preliminary ruling, the national courts of the Member States of the European Union will be the ones who must apply this jurisprudence of the CJEU.
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[1] According to Statista (2022), Amazon represented -in 2022- 37.8% of online sales in the US; followed by Walmart, with 6.3%; Apple, with 3.9%; and eBay with 3.5% (Statista, 2022).
[2] The claimant was Christian Louboutin, a French shoe designer, whose best-known products are high-heeled shoes for women (see, judgment, parties).
[3] The red outsole, for which they are famous, is registered as a Benelux trademark, by the Benelux Convention on Intellectual Property (Trademarks, Designs and Models), of February 25, 2005, signed in The Hague by Belgium, the Grand Duchy of Luxembourg and the Netherlands. The same trademark has been registered since May 10, 2016, as an EU trademark (see, judgment, para. 7).
[4] CJEU (Grand Chamber), Judgment issued in Joined Cases C-148/21 and C-184/21, para. 12.
[5] See CJEU (Grand Chamber), Judgment issued in Joined Cases C-148/21 and C-184/21, para. twenty-one.
[6] The same situation is observed concerning the Benelux Convention on Intellectual Property (Trademarks, Designs, and Models) of February 25, 2005.
[7] CJEU (Grand Chamber), judgment of December 22, 2022 (request for a preliminary ruling from the Tribunal d’arrondissement de Luxembourg, Tribunal de l’entreprise francophone de Brussels, Belgium, Luxembourg) — “Christian Louboutin / Amazon Europe Core Sàrl (C-148/21), Amazon EU Sàrl (C-148/21), Amazon Services Europe Sàrl (C-148/21), Amazon.com Inc. (C-184/21), Amazon Services LLC (C-184/21) (Joined cases C-148/21 and C-184/21)”. These are two accumulated cases, one initiated in Luxembourg (C-148/21) and the other in Belgium (C-184/21).
[8] Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark (OJ 2017, L 154, p. 1).
[9] CJEU, ruling in case C-324/09, ruling.
[10] The German Supreme Court limited the issue to whether a person could be considered to “possess” within the meaning of Art. 9, section 2, letter b and section 3, letter b of R. 2017/1001, when it stored for a third party, products that infringed a trademark right without knowing said infringement, the third party is the one who intends to market the products (Antón, 2020).
[11] Coty Germany vs. Amazon ruling, paragraph 48.
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