COURT OF JUSTICE OF THE EUROPEAN UNION (CJUE) – USE OF AN INFRINGING SIGN BY THIRD PARTY SELLERS ON AN ONLINE SALES PLATFORM
On December 22, 2022, the Court of Justice of the European Union (CJEU) once again addressed the delicate issue of the distribution of infringing goods via online sales platforms.
In this case, the infringing products were distributed on the Amazon platform by third party sellers using Mr. Louboutin’s Benelux and EU trademarks (red color of the outer sole of a shoe) without his consent.
In this context, Mr. Louboutin brought an infringement action against Amazon in Luxembourg before the District Court of Luxembourg (Case C-148/21) and in Belgium before the Court of Brussels (Case C-184/21).
The CJEU, on preliminary questions from those Courts, held that “the operator of an online sales website incorporating, as well as that operator’s own sales offerings, an online marketplace may be regarded as itself using a sign which is identical with an EU trade mark “. In other words, Amazon could be held liable for offering for sale counterfeited goods distributed on its platform.
To be applicable, the user of the website who is ” well-informed and reasonably observant user” must have the impression that the operator itself is marketing “in its own name and on its own behalf” the litigious products. In this context, the elements to be taken into consideration are in particular “a uniform method of presenting the offer” appearing on the operator’s website (operators’ offer and third parties sellers’ offers), the logo of the distributor which appears on all the advertisements (offers from operators and/or from third party sellers) and the offer of additional services to third party sellers such as the storage, shipping and management of returns of the goods…
The Belgian and Luxembourg national Courts (referring Courts) will now have to rule on this case in the wake of the CJEU decision.
To be continued for a possible evolution of the case law…
For the full text of the Court’s judgment and a summary: