sabato, Luglio 13, 2024
Uncategorized

Louboutin v. Amazon: the liability of a marketplace operator for trademark infringement

Introduction

The question whether the operator of an hybrid marketplace can be considered directly liable for trademark infringement when it advertises and delivers infringing products offered by third parties represents the key issue of the recent Louboutin – Amazon case referred to the Court of Justice of the European Union (CJEU). The actors involved in the disputed matter are the French famous fashion designer, Christian Louboutin, on one hand and the American multinational company, Amazon, on the other hand. The implications arisen from the dispute at issue may have significant consequences on the interpretation of Article 9, paragraph 2 of the Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (EUTMR) [1] and, thus, on the recognition of primary and direct liability for the operator of an online marketplace in case of trademark infringement.

The referrals to the Court of Justice of the European Union

In 2019, Christian Louboutin – well-known shoe designer and co-founder of the French luxury company Christian Louboutin S.A. – brought different proceedings for trademark infringement, respectively, before Bruxelles’ and Luxembourg’s courts.

The proceedings at issue have been based on Louboutin’s European Union trademark registration n. 8845539 for the red colour (Pantone 18-1663TP) on the sole of high-heeled shoes [2] that claims protection over the following goods in class 25 of the Nice Classification “high-heeled shoes (except orthopaedic footwear)” [3] and on the relevant Benelux trademark registration n. 874489 always in class 25 [4].

In particular, on 1 March 2019, Mr. Louboutin sought injunctions against Amazon Europe Core Sàrl, Amazon EU Sàrl and Amazon Services Europe Sàrl before the President of the Tribunal de l’entreprise francophone de Bruxelles (Brussels Companies Court, Belgium) for the use of his trademarks due to third-party advertisements of counterfeit shoes on the defendant’s online platform. By means of the decision, the relevant court ruled that Amazon was directly liable for trademark infringement [5] since the use of the mark in third-party listings displayed on Amazon’s marketplace relating to counterfeit products and the subsequent delivery by Amazon through its Fulfilment by Amazon (FBA) programme [6] constituted direct infringement by the platform itself [7]. Afterwards, on 25 June 2020, the Cour d’Appel de Bruxelles (Court of Appeal, Brussels) reversed the first instance decision and stated that Amazon was not responsible for the presence of third-party advertisements for infringing good on its platform.

In addition, Mr. Louboutin brought new proceedings on the basis of the cited European Union and Benelux trademark registrations for the red-sole shoes before Luxembourg’s Tribunal d’arrondissement (District Court, Luxembourg) against Amazon Europe Core Sàrl, Amazon EU Sàrl and Amazon Services Europe Sàrl as well as before the Tribunal de l’entreprise francophone de Bruxelles (Brussels Companies Court, Belgium) against Amazon.com, Inc. and Amazon Services LLC. [8].

By judgements of 5 March 2021 and of 22 March 2021, the courts of Luxembourg and of Bruxelles submitted to the Court of Justice of the European Union requests for preliminary rulings, which have been joined as currently pending cases C-148/21 [9] and C-184/21 [10].

European Union trademark law

The Court of Justice of the European Union has been request to provide, by means of the referrals, a genuine interpretation of Article 9(2) of the EUTMR 2017/1001 and, specifically, to determine in what conditions the operator of an online marketplace may be found directly liable for using a third-party trademark without authorisation under the subject article.

According to European Union trademark law and, in particular, to the above-cited Article 9(2) “the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, 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;
  • the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
  • the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark. [11]”.

However, situations which are to be regarded as “trademark use” are provided by paragraph 3 of Article 9. In particular, they refer to the act of:

“(a) affixing the sign to the goods or to the packaging of those goods;

(b) offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder;

(c) importing or exporting the goods under the sign;

(d) using the sign as a trade or company name or part of a trade or company name;

(e) using the sign on business papers and in advertising;

(f) using the sign in comparative advertising in a manner that is contrary to Directive 2006/114/EC.” [12]

In the words of the Court of Justice, the above-mentioned acts have to be considered as “comportement actif” [13] since they imply activities which consists of offering the goods, affixing the sign, importing or exporting the goods etc. [14]. In this regard, while independent sellers, who advertise and sell goods bearing a third-party trademark, could be considered directly liable for trademark infringement, the same conclusion cannot be draw for the operator of an hybrid marketplace that does not use, in accordance to Article 9(3), a registered trademark without the owner’s authorisation.

Different than “pure” online marketplaces, “some marketplaces, such as Amazon, Zalando, Walmart, El Corte Inglés, Allegro, Otto, and many others, operate a “hybrid” business model, directly supplying their own products and services in addition to, and possibly in competition with, those of third-party sellers. The adoption of such a business model benefits consumers by increasing product and service variety. As a result, a hybrid business model attracts greater consumer traffic and benefits third-party sellers distributing high quality products and competitive prices through their stores” [15]. Under the existing CJEU case law and, in particular, in Google France [16], L’Oréal [17], Coty [18] “the Court opted not to extend the scope of primary liability to acts by intermediaries which could contribute to trade mark infringements committed by users of their services [19].” Moreover, in order to extent primary and direct liability to the operators it requires that “the provider has (i) knowledge of a specific infringement or (ii) failed to act properly in a notice-and- takedown-procedure or, (iii) under copyright only [20], failed to comply with duties take implement appropriate preventive measures” [21].

 

The referred questions

The referring courts have asked to the CJEU specific questions concerning the conditions for determining the use of a third-party trademark under Article 9(2) and, thus, to recognise the direct liability of the operator of an online marketplace when:

(1) it displays advertisements of independent sellers on its platform;

(2) it delivers goods to end customers at the request of independent sellers [22].

Fist of all, for the existing CJEU case law [23], the conditions for applying direct and primary liability to the providers in presence of advertising of independent sellers’ listings bearing a third-party trademark without the owner’s permission are, respectively, two:

  • the operator exercises an active conduct/behaviour and has a direct or indirect control over the use of the trademark;
  • the use of trademark takes place under that operator’s own initiative and in its own name.

In this regard, only situations which imply that the provider has direct or indirect control on the advertisements of independent sellers that it displays on its platform because it considers them as its “own commercial communications” [24] could be referred as actual use of a third-party trademark. In the light of the above, as the fair display of advertisements does not imply the use of the mark as well as the the delivery of infringing goods on behalf of independent sellers who intend to offer the subject products to end consumers has to be considered as no-use of a third-party trademark itself. While Amazon argues that the operator of an online marketplace cannot be liable for the content published on its websites, Louboutin claims that the principles applicable to online marketplaces are not applicable to the defendant, on the basis that Amazon must be considered as a distributor of the goods sold on its websites and that the third-party sellers’ listings represent part of its own commercial communication [25].

Furthermore, the Court has to determine whether the perception of consumers is relevant to determining whether there is use of a trademark. On this purpose, for the established case law, the judge has to consider whether there is use of a trademark before examining the perception of consumers and, thus, to affirm the existence of a risk of confusion for the relevant public; therefore, also the present question should be answered in the negative [26].

 

Conclusion

After one year from the submitting of the requests for preliminary rulings, the Court of Justice of the European Union has not issued any decision yet. The complexity of the case at issue depends on the possibility to hold an operator of an online marketplace liable for its own business model rather than because of its own “material” (acts or omissions) infringement.

Considering such operators responsible for trademark infringements while the infringement itself is committed by third-party sellers, that actually use the mark without the owner’s authorisation in accordance to EU trademark law, cannot be justified by the Court. Moreover, under an economic perspective, it is affirmed that there is no incentive for the operators of hybrid marketplaces to tolerate trademark infringements on their platforms, since the negative long-term consequences of hosting infringers led also to the “loss of reputation in the eyes of consumers and third-party sellers on any marketplace”[27]. However, whether the Court confirms the existing CJEU jurisprudence, there is no doubt that the above cited questions will be answered in the negative.

[1] For further information, please visit to the following website https://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1506417891296&uri=CELEX:32017R1001

[2] For further information on Louboutin’s famous trademark, please refer to A. Valeriani, “Il caso Louboutin: apologia di una suola rossa”, July 2018, available at https://www.iusinitinere.it/il-caso-louboutin-apologia-di-una-suola-rossa-11324

[3] Please visit the following website for further information on the European Union trademark registration https://euipo.europa.eu/eSearch/#details/trademarks/008845539

[4] Please visit the following website for further information on the Benelux trademark registration https://www.boip.int/en/trademarks-register?app=%2Fitem%2Fbx1194231

[5] Tribunal de l’entreprise francophone de Bruxelles, judgement n. 003694, August 7, 2019, available at https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=5&ved=2ahUKEwj7jdb_n6XkAhXC6aQKHY28DQEQFjAEegQIBRAC&url=https%3A%2F%2Fwww.ie-forum.be%2Fdocuments%2Fecli%2F5d551adc-d2f4-43e5-8b06-2d65c35ff8c2.pdf&usg=AOvVaw2Qmup1lXjvv6vMm84MT-tK

[6] For further information, please visit to the following website https://sell.amazon.com/fulfillment-by-amazon

[7] E. Rosati, “Can Amazon be directly liable for trade mark infringement? A new CJEU referral”, May 8, 2021, available at https://ipkitten.blogspot.com/2021/05/can-amazon-be-directly-liable-for-trade.html

[8] “Louboutin v. Amazon: is a marketplace operator liable for advertising third-party offers for trademark infringing products?”, June 9, 2021, available at https://www.momentum-avocats.com/2021/06/09/louboutin-vs-amazon-is-a-marketplace-operator-liable-for-advertising-third-party-offers-for-trademark-infringing-products/

[9] Referral to the CJEU, C-148/21, available at https://ipcuria.eu/case?reference=C-148/21

[10] Referral to the CJEU, C-184/21, available at https://ipcuria.eu/case?reference=C-184/21

[11] Article 9, paragraph 2 of the Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, available at https://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1506417891296&uri=CELEX:32017R1001

[12] Article 9, paragraph 3 of the Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark, available at https://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1506417891296&uri=CELEX:32017R1001

[13] E. Rosati “The Louboutin/Amazon cases (C-148/21 and C-184/21) and primary liability under EU trade mark law”, April 8, 2022, available online at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4078987

[14] E. Rosati “The Louboutin/Amazon cases (C-148/21 and C-184/21) and primary liability under EU trade mark law”, April 9, 2022, available online at https://ipkitten.blogspot.com/2022/04/the-louboutinamazon-cases-c-14821-and-c.html

[15] J. Padillla, “Trademark liability in Hybrid marketplaces”, April 3, 2022, available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4074076

[16] Court of Justice of the European Union, judgement of March 23, 2010, available at https://eur-lex.europa.eu/legal-content/EN/ALL/?uri=CELEX%3A62008CJ0236

[17] Court of Justice of the European Union, judgement of July 12, 2012, available at https://curia.europa.eu/juris/liste.jsf?num=C-324/09

[18] Court of Justice of the European Union, judgement of April 2, 2020, available at https://curia.europa.eu/juris/liste.jsf?num=C-567/18

[19]Court of Justice of the European Union, judgement of June 22, 2021, available at https://curia.europa.eu/juris/liste.jsf?num=C-682/18

[20] In particular under Article 17 of Directive 2019/790 on Copyright in the Digital Single Market, available at https://eur-lex.europa.eu/eli/dir/2019/790/oj

[21] J. Padilla, “Trademark liability in Hybrid marketplaces”, April 3, 2022, pag. 2, available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4074076

[22] E. Rosati “Another Louboutin v. Amazon case raises questions about marketplace liability”, April 14, 2022, available at  https://www.thefashionlaw.com/another-louboutin-v-amazon-case-raises-questions-about-marketplace-liability/

[23] In particular, in Daimler C-179/15, available at https://curia.europa.eu/juris/liste.jsf?num=C-179/15 and in Coty, C-567/18, available at https://curia.europa.eu/juris/liste.jsf?num=C-567/18

[24] E. Rosati “The Louboutin/Amazon cases (C-148/21 and C-184/21) and primary liability under EU trade mark law”, April 8, 2022, available online at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4078987

[25] A. Asselberghs, “Louboutin v. Amazon: a new CJEU referral on platform liability for trademark infringement”, available at https://www.debandt.eu/en/node/466

[26] E. Rosati “The Louboutin/Amazon cases (C-148/21 and C-184/21) and primary liability under EU trade mark law”, April 8, 2022, available online at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4078987

[27] J. Padilla, “Trademark liability in Hybrid marketplaces”, April 3, 2022, available at https://papers.ssrn.com/sol3/papers.cfm?abstract_id=4074076

Chiara Zampaglione

Laureata in Giurisprudenza presso l'Alma Mater Studiorum - Università di Bologna nell'ottobre 2021. Durante il suo percorso universitario ha avuto l'opportunità di studiare in Germania presso la Johannes Gutenberg-Universitat Mainz grazie al programma Erasmus+ e presso la Freie Universitat Berlin grazie alla partecipazione all'associazione UNA Europa. Appassionata di diritto e nuove tecnologie ha, inoltre, preso parte alla 2020 Intellectual Property Law School organizzata dalla Jagiellonian University di Cracovia. Attualmente svolge la pratica legale presso uno studio milanese specializzato in Proprietà Intellettuale.

Lascia un commento