The opinion was provided in relation to a request for a preliminary ruling in joined cases C-148/21 and C-184/21, both of which are disputes between French footwear designer Christian Louboutin ("Louboutin") and the world's largest online retailer, Amazon.
Louboutin is best known for its high-heeled women's shoe, the red outer sole of which is registered as a trade mark in the EU and Benelux. In 2019, Louboutin brought trade mark infringement proceedings against Amazon in the Brussels Companies Court and the District Court of Luxembourg, complaining that unauthorised red-soled shoes that were being advertised by third parties on Amazon's website and the stocking and shipping of those shoes, constituted use of a sign identical to its registered trade mark by Amazon itself and therefore Amazon was infringing.
In response, Amazon argued that, as an online marketplace operator, it could not be held directly liable for the content published on its website by third parties and did not 'use' the signs at issue. Louboutin contended however that, due to the mixture of goods advertised and sold under Amazon's own name and those from third-party sellers offered by the Amazon platform, Amazon must be characterised as a distributor and that advertisements from third parties on the Amazon website 'formed an integral part of Amazon's commercial communication'.
The AG therefore needed to consider whether, and if so, in what circumstances, an online marketplace operator could be found directly liable under Article 9(2) of Regulation 2017/1001 (which sets out the rights conferred by an EU trade mark) for displaying advertisements of third-party infringing goods on its online marketplace and for the delivery of those infringing goods to end customers.
The AG's opinion
Article 9(2) of Regulation 2017/1001 provides that proprietors of EU trade marks are entitled to prevent all third parties from using their trade marks without their consent where, for example, the sign used by a third party is identical and used in relation to identical goods and services as the registered trade mark.
The AG clarified that the concept of use must be viewed from the perspective of a user of the platform in question and that when a third party uses a sign, it is implied to the user that the sign is used in the third party's own commercial communication. The AG cited a number of settled case-law in support of his position including Google France and Google (C-236/08 to C-238/08, L'Oréal and Others (C-324/09) and Coty Germany (C-567/18).
However, when determining whether a sign is used in the commercial communication of the operator of that platform (i.e. Amazon in this case), the perception of a reasonably well-informed and reasonably observant user of an intermediary online platform should be taken into account. If such a user thought the use of the sign formed part of the platform's commercial communication, then that would constitute use of the sign by the platform itself.
Although the commercial offerings of third parties and that of Amazon itself are presented uniformly on Amazon's website, and each includes the Amazon logo, the AG noted that whether the goods are sold by a third party or directly by Amazon is always specified in the advertisement for each product. The AG was of the opinion that, viewed from the perspective of a reasonably well-informed and reasonably observant internet user, the use of Louboutin's sign formed part of the third party's commercial communication and not the commercial communication of Amazon and therefore Amazon did not 'use' Louboutin's sign. The same applied to the additional services of assistance, stocking and shipping the goods by Amazon. In those circumstances also, Amazon was not using the sign.
The AG makes some interesting analysis on the concept of 'use' of a trade mark by an online intermediary. The opinion, although not binding on the CJEU, provides an indication of the questions the CJEU judges will have to consider in their deliberations and suggests that if it is made clear to the reasonably well-informed and reasonably observant internet user that goods are offered by a third party, an intermediary platform may not infringe an owner's EU trade mark rights.
The outcome of this case will be particularly concerning for online marketplace platforms should the CJEU disagree with the AG's opinion, as such a decision could have major implications for online marketplaces like Amazon, in relation to how third party goods are presented on their websites.
With special thanks to Richard Gorman, trainee and co-author of this article.
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