Can EU Operators Of Online Marketplaces Be Held Liable For Trademark Infringement?

• Jurisdiction: European Union
• Law Firm: Jones Day
• Subject Matter: Intellectual Property, Media, Telecoms, IT, Entertainment, Trademark, Advertising, Marketing & Branding
• Author: Mr Edouard Fortunet, Rebecca Swindells, Jakob Guhn and Sarah Candelibes
• Published date: 03 March 2023

In Short

The Situation: The Court of Justice of the European Union ("CJEU") recently ruled that operators of online marketplaces may be held directly liable for trademark infringement in a context where third-party sellers place infringing goods on their marketplace and the user of such a marketplace establishes a link between the services of the marketplace operator and the sign at issue.

The Background: In parallel proceedings before Luxembourg and Brussels courts, a famous French luxury designer brought actions against a well-known operator, alleging infringement of its trademark. The two courts referred the matter to the CJEU to clarify whether an operator of an online marketplace could be held liable for trademark infringement by advertising and/or delivering infringing goods offered on the site by a third-party retailer.

Looking ahead: This decision follows the recent trend of imposing more stringent responsibilities on online marketplaces as to placement and advertising of illicit goods, in particular in Europe through the adoption of the Digital Services Act. This signals an increased opportunity for trademark proprietors to protect their rights online and an increased necessity for marketplace operators to be watchful of third-party goods offered through their websites.

CJEU Decision

In joint cases C-148/21 and C-184/21, the CJEU was asked whether the operator of an online marketplace on which a third-party offers goods bearing a sign identical to a third-party EU trademark for identical goods is 'using' such sign under the EU Trademark Regulation 2017/1001 ("EU Trademark Regulation").

Article 9(2) of the EU Trademark Regulation allows trademark proprietors to prevent third parties from 'using' a registered trademark to commercialize or advertise identical or similar goods. Third-parties selling or advertising infringing goods on online marketplaces are clearly 'using' the registered trademark and can be held liable for trademark infringement. Less clear, however, is whether the online marketplaces are also 'using' the registered trademark and can be held liable for trademark infringement.

In 2020, the CJEU had ruled that online marketplace operators were not deemed to be 'using' a registered trademark in a context where they merely created technical conditions necessary for the use of the registered trademark (including by allowing third-party sellers to advertise goods on their marketplace or by offering storage services) (CJEU, 2 April 2020...