The Court of Justice of the European Union (“CJEU”), in a recent case (Louboutin v. Amazon), has clarified the responsibility of online marketplace operators for the publication of advertisements and the distribution of products bearing a counterfeit sign even if the aforementioned ads and products are offered on the platform by third-party sellers. Indeed, with the expansion of e-commerce, brands are increasingly exposed to the phenomenon of counterfeiting, which can be difficult to repress: often, in fact, the owner of the counterfeit brand is not able to identify the direct responsible.
Christian Louboutin, famous French designer whose most iconic products are the well-known women’s shoes with high heels and red soles, has therefore filed two lawsuits against Amazon – in Luxembourg and Belgium – claiming that the latter had infringed its trademark by advertising counterfeit shoes sold by third parties on the online platform. Amazon, instead, invoked two precedents of the ECJ (L’Oreal v. eBay; Coty v. Amazon,) to defend itself, denying the liability of online intermediaries for trademark infringement in relation to products offered by third parties.
The national courts before Louboutin in the aforementioned proceedings had therefore referred the matter to the CJEU.
The latter claimed that Amazon may be held responsible for advertising fake Louboutin shoes on its platform – thus deviating markedly from its own previous jurisprudence. In fact, the CJEU came to this conclusion from the assumption that Amazon, being a “hybrid” platform that integrates both an online marketplace and the direct sale of products – unlike eBay (which is limited to managing an online marketplace by publishing only advertisements of third-party sellers without carrying out any sales activity of products) – does not make it possible for the average user to understand whether products infringing the trademark are marketed directly by Amazon itself or by a third party vendor.
In particular, the CJEU noted that where Amazon uses “a uniform way of presenting the offers published on its website, displaying simultaneously the ads related to the products it sells in its name and on its own behalf and those related to the products offered by third-party sellers on that marketplace, which displays on all these advertisements its renowned distributor logo and offers to third-party sellers, in the context of the marketing of products marked by the sign in question, additional services consisting in particular in the storage and dispatch of such products“, makes it difficult for consumers to distinguish the origin of each advertisement and the provenance of counterfeit goods.
This CJEU ruling – which lays down only general principles – does not in itself constitute a judgment against Amazon; the final decision will be taken by the national courts in Belgium and Luxembourg.
In any case, this preliminary ruling, on the one hand, makes online market operators who use a hybrid model (such as Amazon) rightly more susceptible to the sale of counterfeit products on their sites; on the other hand, it facilitates the protection of trademark owners, who can act for counterfeiting against large operators (such as Amazon, in fact), instead of being forced to identify and attack individual counterfeiters.
