Use Of A Trademark By An Online Service Provider: AG Szpunar's Opinion In The Louboutin/Amazon Case

• Published date: 07 July 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Global Advertising Lawyers Alliance (GALA)
• Author: Ms Chiara Marchisotti (Portolano Cavallo)

This article has been written in collaboration with Marianna Riedo

Advocate General Maciej Szpunar issued his opinion in Joint Cases No. C-184/2021 and C-148/2021, initiated by the famous French shoe designer Christian Louboutin against Amazon, in its dual capacity as a provider - an online marketplace - and distributor of products.

The referral to the Court of Justice of the European Union (CJEU) concerned the online sale of counterfeit products, and in particular whether the perception of a "reasonably well informed and reasonably observant internet user" is relevant to determine whether use of the trademark by the online service provider can be identified in the context of advertisements for independent sellers' goods on the online marketplace that it operates.

THE FACTS IN DISPUTE

The question referred for a preliminary ruling from the CJEU involves Amazon's business model, which the AG defines as "hybrid," since Amazon operates both as a distributor and as the operator of an online marketplace. Indeed, Amazon displays on its platform both ads for its own products, which it sells and ships to consumers under its own brand name, and ads for third-party sellers. It also offers third-party sellers additional services, such as storage and shipping of products advertised on its platform, informing potential buyers that it will be responsible for such activities.

The trademark infringement complained of by Christian Louboutin, the French shoe designer, concerns the red outer sole (Pantone 18.1663TP) for women's high-heeled shoes, which he registered as a trademark in the EU and Benelux.

Louboutin claims that advertisements for red-soled shoes regularly appear on the Amazon platform, referring to products placed on the market without his consent. For this reason, Louboutin brought two lawsuits against Amazon, in Luxembourg (before the Luxembourg Tribunal d'arrondissement) and in Belgium (Tribunal de l'entreprise francophone de Bruxelles), alleging that the company used a sign identical to his trademark for goods or services identical to those for which his trademark is registered.

According to the designer, Amazon's direct liability stems from the fact that advertisements that constitute trademark infringement are an integral part of Amazon's commercial communication.

Both courts then referred their cases to the CJEU, asking whether the operator of a hybrid marketplace could be considered directly liable for trademark infringement due to the presence of...