Online retail giant Amazon should not be held liable for the sale of counterfeit Christian Louboutin shoes sold on its platform, according to an Advocate General at the Court of Justice of the European Communities (CJEU).
Advisory opinion of Advocate General Maciej Szpunar – available here – notes that if intermediary online sales platforms such as Amazon make this counterfeiting activity “technically possible”, they “cannot be held directly responsible for infringements of the rights of trademark holders that have occurred on its platform as a result of commercial offers of third. “
The notice clarifies the notion of “use” of the mark by an online intermediary, which, according to Szpunar, should be applied from the point of view of a user of the platform in question.
The Advocate General recalls in this respect that it is clear from the Court’s settled case-law that the act of use by an intermediary of the Internet presupposes, “at the very least, that this third party uses the sign in its own commercial communication.”
“The mere fact that Amazon’s advertisements and those of third-party sellers appear side by side does not imply that a reasonably informed and reasonably observant Internet user could perceive the signs displayed on the advertisements of third-party sellers as forming an integral part of the communication commercial from Amazon.
“The same applies to the complementary services of assistance, storage and dispatch of goods bearing a mark identical to a mark, for which Amazon has also actively contributed to the preparation and publication of sales offers.”
Szpunar is therefore of the opinion that “in these circumstances, the operator of an online platform such as Amazon does not use a sign”. It concludes that “it is always specified, in the advertisements, whether the goods are sold by third-party sellers or sold directly by Amazon”.
Although this is not a final verdict in the case, it is likely the CJEU will take the advice when deciding the case later this year.
Louboutin’s complaint is that because Amazon routinely displays advertisements on its websites for shoes that mimic Louboutin’s signature and red-soled brand styles, and fulfills orders for them, without the designer’s consent , it should share the responsibility with third-party sellers for trademark infringement.
Louboutin filed lawsuits against Amazon in Belgium and Luxembourg, claiming that the retailer played an active role in allowing trademark infringement to take place and “did not just provide a neutral service, creating the technical conditions necessary for that others commit” the illegal acts.
He won the first rounds of litigation, which was then referred to the CJEU for final judgment.