New referrals have been brought before the EU Court of Justice concerning the direct liability of the well-known online marketplace Amazon for trademark infringement, respectively by the Luxembourg District Court and the Brussels Enterprise Court (cases C-148/21 and C-184/21). The national proceedings were initiated by Christian Louboutin, the proprietor of the famous trademark protecting the red colour on the sole of high-heeled shoes.
Following Article 9, paragraph 2, of the EU Trademark Regulation, any “use” of a protected sign in the course of trade, without the consent of its proprietor, constitutes an infringement to the rights acquired by that proprietor. Paragraph 3 of Article 9 of the Regulation enumerates a non-exhaustive list of prohibited uses, including the use in advertising, the offering or the stocking of counterfeit goods.
In the cases at hand, Amazon contends that it does not use the signs at issue, since, as the operator of an online marketplace, it cannot be liable for the content published on its websites. Louboutin, however, maintains that the principles applicable to online marketplaces are not applicable to Amazon, on the basis that Amazon must be characterised as a distributor of the goods sold on its websites and that the advertisements placed by third-party sellers form part of Amazon’s own commercial communication. The referring courts note that the operating method of Amazon consists of a mixture of advertisements placed, on the one hand, by Amazon for its own products and, on the other, by third-party sellers. The national courts therefore asked the Court of Justice whether the use of a sign in an advertisement could engage the liability of the online marketplace when consumers may consider that the advertisement is attributable to the marketplace and, in that case, what the criteria are that influence the perception of the consumers (the normally informed and reasonably attentive Internet user).
The referral is rather significant since it takes into account the dual role of Amazon, being an online marketplace on the one hand, and a distributor of goods on the other. In the L’Oréal/eBay case (C-324/09), the Court of Justice ruled out the liability of eBay for advertisements placed online by third-party sellers. However, this ruling took place in the context of eBay as a pure online marketplace, intervening solely as an intermediary, not as a seller and/or distributor of the infringing goods.
In the case of Coty (C-567/18), which did involve Amazon, the Court of Justice also interpreted Article 9, paragraph 2, of the EU Trademark Regulation but considered that Amazon does not “use” the protected sign if it only stores infringing goods without being aware of the trademark infringement and without pursuing the aim of putting those goods on the market/offering those goods. However, the ruling was highly dependent on the wording of the question referred, which was rather narrow and did not accurately describe the active role played by Amazon. The Advocate General emphasised that if a platform is actively involved in the distribution of infringing goods (for example under a scheme exhibiting the features of the “Fulfilment by Amazon” programme), which the seller joins, the platform may be regarded as storing those goods for the purposes of offering them or putting them on the market and could be held liable for trademark infringement whether or not the platform knows the infringing nature of the goods.
These recent Louboutin referrals deserve our close attention. The answer to the questions will without doubt be important to define the growing obligations and liabilities of online platforms. We will keep you informed of the developments relating to the scope of platforms’ liability.
Please contact Karel Janssens for further information and/or for general legal advice relating to online platforms.