Both disputes arose in 2019, when the French fashion designer Christian Louboutin appealed, against the e-commerce giant Amazon, an infringement of his exclusive rights claimed on trademark No. 0874489 registered in the Benelux, and trademark No. 8845539 in the European Union. The subject-matter of his patent rights concerns the “semelle rouge”, i.e. that particular spot of red (Pantone No. 18-1663TP) applied to the sole of luxury shoes, which has been distinguishing and making the collections of the Parisian footwear maison famous worldwide since the early 1990s.

In both proceedings brought against Amazon, Louboutin complained that, among the various advertisements on the platform, they were offered for sale several red-soled shoes, alleging that the operator had acted in violation of its exclusive rights, having advertised and marketed – without his consent – products identical to those for which its trademark is registered.

Both national courts – Luxembourg in case C-148/21, and Belgium in case C-184/21 – made references to the Court of Justice for preliminary ruling, in order to ask to European Judge to clarify the question of the liability of operators of online sales platforms.

In particular, by means of the abovementioned references, the Court was asked whether it was possible to charge direct liability to the operators of e-commerce platforms in relation to the publication of advertisements for the sale of counterfeit goods, even if offered by third parties. Moreover, in those references, there was also a request of interpretating the notion of “use” of the trademark regulated under Article 9(2) of European Regulation No 2017/1001.

In setting out its conclusions on the issue, Szpunar expressly referred to the function and activity performed by Amazon in the e-commerce, which operates as an intermediary on a “hybrid” market by offering consumers both its own and third-party products, as well as shipping and warehousing services. In this regard, the Advocate General has been claimed that the presence of Amazon’s logo as a distributor in third-party sales advertisements does not constitute a connection with the products offered. Accordingly, any infringements committed would also not be attributable to the platform operator provided that no elements would lead the normally informed user confusing the origin of the advertisement and perceiving the product logo as an integral part of the advertising offered by the operator.

Moreover, with reference to the interpretation of Article 9 of the European Regulation, the Advocate General considered that the commercial communication activities carried out by digital intermediary and e-commerce platform operator should not be considered among the hypotheses of ”use” of a trademark, and therefore it should not be liable for any infringements committed on its platform by third parties.

Therefore, the AG expressly concluded that Amazon “cannot be held directly liable for infringements of trademark owners’ rights that occur on its platform as a result of commercial offers by third parties”.

Although not binding for the next decision of the Court, the Advocate General’s conclusions represent a relevant reflection in relation to the criteria for attributing liability to e-commerce platform operators, especially in view of – and in anticipation of – the entry into force of the Digital Service Act, and the Digital Markets Act.

Federica Schiavone