The European Court of Justice by decision 22 December 2022 (joined cases C-148/21 and C-184/21) clarified the notion of “use” of a trademark on the online market, redefining the boundaries of the responsibility of the provider of the marketplace for the illicit use of the trademarks of others.
The Court expressed itself following the referral for a preliminary ruling presented by the Courts of Luxembourg and Brussels, where there were two infringement proceedings promoted by Christian Louboutin against the group Amazon pending.
The French designer, owner of the trademark identifiable by the characteristic red sole applied under the heeled shoes, had noticed that many different websites managed by Amazon were sponsoring sale ads related to red-sole heeled shoes, infringing thus his rights on the trademark. Louboutin then asked for the recognition of Amazon as responsible for the infringement of his trademark.
Use of an infringed trademark: can a provider of a marketplace be considered responsible?
Before giving their judgment, the two national judges asked the intervention of the Court of Justice in order to clarify under what circumstances the use of a counterfeiting sign appearing in the sale ad of a third vendor can be attributed to the provider of the e-commerce website. In particular, it was asked whether the activity of the marketplace provider can be considered “use of a trademark” which, with respect to the sale ad published by a third party using a trademark of others:
- Carries out the shipping and delivery activity of the product bearing the (counterfeited) trademark to the final consumer
- Gives to the public the perception of carrying out an active role in the promotion of the sale ad of the third party.
Firstly, the Court recalled that art. 9 of the EU Reg. no. 2017/1001 confers to the owner of the trademark the right of prohibiting to anyone the use, in the commercial activity, of a sign identical to such trademark for products or services identical to those for which it has been registered. The court also clarified that the Regulation does not define exactly the notion of “use” but that, according to its usual meaning, the expression “to use” implies an active behavior and the, direct or indirect, control of the act which constitutes the “use”. In other words, according to the Court only the person having the power to stop such use could be in the position of respecting such prohibition.
The Court then analyzed earlier cases-law reiterating that, with regards to the provider of a marketplace, the use of signs identical to or similar with someone else’s trademarks in sale ads published on the platform can be attributed only to the single vendors and not to the provider of the platform, if the latter did not use such sign in the context of its own commercial communication and it is not aware of the counterfeiting origin of the published or stocked products.
The decision of the Court of Justice in the case Louboutin vs Amazon
Thus, in the case of the Amazon commercial offer, the Court considered that it could not disregard the modalities of presentation of the ads operated by the platform. In fact, Amazon uses a homogeneous modality of presentation of the sale ads published on its website which allows a simultaneous visualization of ads of its own and of third parties vendors, shows its own logo on all ads and offers add-ons services to third party vendors, such as the support in the presentation of their own ads, storage and shipping of their products. In a nutshell, Amazon presents many products without clearly differentiating its own from the third parties’ ones and sponsors them indistinctly with mentions such as “Top sellers” and “most requested”. Such presentation, according to the Court, is made to reinforce in the normally informed and reasonably careful user the impression that the products thus promoted are sold directly by the provider of the marketplace.
With respect to such conducts, the Court of Justice stated that the referral judges will have to evaluate if Amazon, as provider of such platform, has effectively made illicit use of the Louboutin trademark in its commercial communication.
Nevertheless, it gave the judges a rather clear interpretative criteria stating that it can be assumed that a provider of an e-commerce website uses itself a counterfeited trademark when third vendors offer the sale of products bearing the above-mentioned sign and the user determines a link between the provided service and the sign at issue. Moreover, the Court adds that there could be a link between the provider services and the sign “when, taking into account that all the elements characterizing the situation under exam, a user could have the impression that it is the provider itself marketing, in its name and on its own, the products bearing the above-mentioned sign. In this regard, it is significant that the mentioned provider uses a uniform presentation modality for the ads published on its website, displaying at the same time the ads related to products sold in its name and on its own, and those related to products offered by third party vendors on such market, that it displays the logo of the known distributor on such ads and that it offers to third vendors, in the context of commercialization of the products bearing the sign at issue, complementary services consisting of particular storage and shipping of such products”.
Ilaria Feriti