Facts

Christian Louboutin is a French footwear designer best-known for designing high-heeled women’s shoes. Since the 1990s, Mr Louboutin’s shoes have always had a red outer sole. The red colour is registered as an EU and a Benelux trade mark (the Marks).

The well-known online marketplace operator, Amazon, advertises and sells both its own goods, which it sells and ships under its own name, and those of third-party sellers. It also offers third-party sellers additional services of stocking and shipping goods advertised on its platform while informing potential purchasers that it is responsible for those activities.

Amazon websites regularly display advertisements for red-soled shoes, which Mr Louboutin claims have been placed on the market without his consent. Mr Louboutin has issued proceedings against Amazon in both Luxembourg (C-148/21) and Belgium (C-184/21), claiming that Amazon has used a sign that is identical to his Marks in relation to goods that are identical to those for which his Marks are registered. He claims that the advertisements on Amazon’s platform form an integral part of Amazon’s commercial communication.

The courts in both Luxembourg and Belgium have asked the Court of Justice of the European Union whether, given Amazon’s hybrid business model, the operator of an online sales platform can be held directly liable for the infringement of the rights of trade mark proprietors on its platform under the Trade Mark Regulation (2017/1001/EU).

Opinion

Advocate General Szpunar clarified the concept of “use” of a trade mark by an online intermediary, which, in his view, should be applied from the perspective of a user of the platform in question. He said that it is clear from case law that the act of use by an internet intermediary presupposes, “at the very least, that that third party uses the sign in its own commercial communication” (Cases C-236/08 to C-238/08 Google and Google France and Case C-324/09 L’Oréal and Case C-567/18 Coty Germany).

The AG considered that that condition is met where the addressee of the communication makes a link between the intermediary and the sign in question. This must be assessed from the point of view of the reasonably well-informed and reasonably observant user of the online sales platform. The question is whether the sign appears to that user to be integrated into the commercial communication of the operator of the platform.

Further, the AG said, under EU trade mark law, the operator of an online sales platform will only be liable if it directly uses a sign identical/similar to a registered trade mark. While the commercial offerings of third parties and of Amazon are presented in the same way on Amazon’s platform and each includes the Amazon logo, the advertisements always specify whether the goods are sold by third-party sellers or directly by Amazon.

Accordingly, the AG said, the mere fact that Amazon’s advertisements appear next to those from third-party sellers did not necessarily mean that a reasonably well-informed and reasonably observant internet user might perceive the signs in the third-party seller advertisements as an integral part of Amazon’s commercial communication. The same applied to the additional services of stocking and shipping goods.

Therefore, in the AG’s opinion, in those circumstances, the operator of an online platform such as Amazon does not “use” the sign that is claimed to be identical to a registered trade mark and cannot therefore be held directly liable for infringement. (Joined Cases C-148/21 and C-184/21 Christian Louboutin v Amazon Europe Core Sàrl/Amazon.com Inc ECLI:EU:C:2022:422 (2 June 2022) — to read the judgment in full, in French, click here. To read the court’s press release in full, in English, click here.