French fashion designer Christian Louboutin, the holder of the European Union trademark consisting of the famous red sole on certain footwear models, brought proceedings in both Belgium and Luxembourg asking the national courts for damages and to stop the infringing use of the trademark by the e-commerce platform Amazon. Louboutin argued that the e-commerce giant was liable for trademark infringement, even though Amazon did not directly sell the shoes bearing the trademark, but insofar as it played an active role in the commercial use of the sign. The stylist’s lawyers have shown how on the platform there were advertisements of products sold by third parties grouped with those sold by Amazon and that the latter had included all the advertisements in its commercial communication. According to Louboutin, this activity cannot therefore be classified as mere online service intermediation.
The focus of the trademark holder’s complaint was the way in which the service offered by Amazon online is articulated, which uniformly presents its own product offerings, as well as those of third parties, without any differentiation as to their respective origin. Moreover, the service offers at the request of third parties additional activities consisting, in particular, in the storage and shipping of products, informing potential customers that Amazon performs these services.
The present case must be examined in the light of Article 9(2)(a) of EU Regulation No. 2017/1001 on the European Union trademark, according to which the proprietor of a European Union trade mark is entitled to prohibit third parties, without his consent, from using for commercial purposes any sign where: “the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered”. Having said that, the national courts have referred several questions to the Court of Justice of the European Union for a preliminary ruling, particularly whether in assessing the applicability of the rule indicated to Amazon’s conduct it is necessary to consider the perception of the platform’s users.
On December 22nd, 2022, the CJEU issued its judgment, ruling that the holder is entitled to prohibit the use of the trademark by an e-commerce service provider where the latter’s activities lead the normally informed and reasonably attentive user to draw a connection between the services offered by the provider and the trademark. Specifically, this circumstance occurs where the user is reasonably led to believe that the goods bearing the trademark in question are sold directly by the provider of the platform.
According to the Court of Justice, it is of particular relevance in the assessment of the case that the provider uniformly presents offers to users on its platform, jointly communicating its own advertisements and those of third-party sellers and adding its own distinctive signs to all the advertisements, and also offering third-party sellers storage and shipping services for the products.
The decision would appear to be at odds with the Court of Justice’s previous guidance, which had held in other decisions that the activity of the ecommerce service provider consisted merely in providing technical means to use a trade mark, and as such was not to be regarded as a decisive circumstance for finding that the service provider made use of the trade mark within the meaning of Article 9(2)(a) of EU Regulation No. 2017/1001.
The Court itself made it clear that the present case, however, differs from the previous ones due to the particular conduct of Amazon in communicating to users the offers of products seen by third parties, which are presented in a consistent manner with the offers of products sold directly by the provider of the e-commerce service, as well as the circumstance that the provider also provides additional storage and shipping activities for the products purchased on its platform.
In conclusion, the Court of Justice’s interpretation would tend to favour trademark protection also on the internet. It will now be up to the national courts of Belgium and Luxembourg to decide on the merits and to decline the principle of the European court in the concrete case.