Louboutin v. Amazon: the CJEU opens the door to the liability of online marketplaces – Intellectual property

Christian Louboutin is the owner of a Benelux trademark registered in 2005 and of a European Union trademark registered in 2016. This trademark, called position, is characterized by the affixing of a characteristic red color on the sole of a high-heeled shoe. The holder accuses Amazon of having infringed its trademark rights, on the one hand, by the posting on its online marketplace of advertisements relating to shoes with red soles put into circulation without its consent, on the other hand, by having held, shipped and delivered these products.

According to the holder, through these actions, Amazon would have played an active role in the use of its trademark, justifying the recognition of the platform’s liability in the field of trademark law. Amazon replies that the presence of its logo on the advertisements of third-party sellers, the ancillary services it offers or even the fact that it creates the necessary technical conditions, against payment, for the use of a sign identical to a protected mark does not imply that it uses the sign within the framework of its own commercial communication.

The referring courts, for their part, point out that the operation of Amazon differs from the operation of certain other online sales websites, which merely operate an online marketplace whose advertisements come exclusively from third-party sellers. They therefore wonder whether the different mode of operation of Amazon, which proceeds from a grouping on an online sales website of both third-party advertisements and the website operator, could induce the use of a sign identical to a trademark by the operator himself.

In such a context, the courts question the role to be given to the public’s perception of the imputability of such use. They also wonder whether the operator who provides, in particular, a shipping service for products bearing a sign identical to a registered trade mark uses the sign within the meaning of Article 9, § 2, sub a) of Regulation (EU ) 2017/1001. Thus, the referring courts decide to question the Court in order to determine whether the operator of an online sales website, which offers, in addition to its own offers for sale, an online market place, itself use, within the meaning of Article 9, § 2, of Regulation (EU) 2017/1001 on the European Union trademark, of a sign identical to a registered trademark, when the third-party sellers offer the sale on this same online market place of products bearing this sign without the consent of the holder.

The notion of use in business life

The Court returns firstly to the notion of “making use” which, not being defined by the texts, had to be the subject of a jurisprudential framework. She then cites her judgment Coty Germany (CJEU 2 Apr. 2020, case C-567/18, D. 2020. 1599 notes A. Mendoza-Caminade ; ibid. 2262, obs. J. Larrieu, C. Le Stanc and P. Tréfigny ; ibid. 2021. 443, ob. J.-P. Keyboard ; Dalloz IP/IT 2020. 446, obs. C. Marshal Pollaud-Dulian ; Légipresse 2020. 633, study Y. Basire, M.-S. Bergazov, C. de Marassé-Enouf, C. Piedoie, M. Sengel and R. Soustelle ; Civil RTD. 2020. 910, ob. P.-Y. Gautier ; RTD com. 2020. 343, ob. J.Passa ; RTD eur. 2021. 1000, obs. E. Treppoz ; Owner intell, no. 76, pers. Y. Basire), in which it held that the third party “uses” the sign when it has an active behavior, implying a direct or indirect control of the act in question (pt 27), in that, naturally, only the third…

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