The CJEU has again ruled on the possibility of attributing to operators of online sales platforms liability for a trade mark infringement for advertising goods offered by third-party sellers. The case concerned Amazon’s liability for advertising on its platform shoes infringing a trade mark depicting the famous red sole designed by Christian Louboutin.

The CJEU held that the operator of an online sales website may be regarded as using by itself a sign that infringes a trademark and that appears in a third party’s commercial offer on that website. Such use may occur if a well-informed and reasonably observant user of that the website may have the impression – in view of all the circumstances – that the operator itself is marketing, in its own name and on its own account, the goods bearing that infringing sign. The facts of the case at hand were specific because Amazon applies a kind of a hybrid business model. In addition to providing a marketing platform for third-party sellers and publishing their advertisements, it carries out its own sales activity i.e. it offers goods in its own name publishes its own advertisements and provides other services for third-party sellers.

The judgment is relevant for holders of rights and all operators of online sales platforms. Holders of rights may – subject to certain conditions – successfully bring claims of trade mark infringement that has taken place on a sales platform directly against the operators of such platforms. For operators of such platforms, the CJEU provides clear guidance as to what specific additional actions – beyond providing ancillary services of marketing platform – may give rise to their liability for trade mark infringement.

Judgment of the Court dated 22 December 2022 in joined Cases C-148/21 and C-184/21

Facts of the case
A famous designer of luxury footwear and handbags, Christian Louboutin sued an online marketplace platform Amazon before the court in Luxembourg for infringement of its graphic trademark depicting a red shoe sole:

Louboutin claimed that Amazon uses the sign identical to the above trademark by displaying on its online sales websites, in advertisements of goods bearing such sign and offered by third-party sellers. In addition, Amazon provided to the sellers the services of storing, shipping, and delivering of such goods. Louboutin argued that the advertisements formed part of Amazon commercial communication, in particular Amazon included its logo and
provided assistance to third-party sellers such as how best to present their offers. Amazon counter-argued that it does not use the contested sign. Basing on the previous case law it persuaded that the third-party sellers use the sign and they are liable for trademark infringement.

Request for a preliminary ruling
The national court hearing the case noted that the operating method of Amazon differs from that of other companies which merely provide an online marketplace. The national court pointed that in contrast to eBay or Rakuten, Amazon offers not only goods of third party sellers but also its own goods and advertises both categories of such goods. In effect, the national court referred to the CJEU request for a preliminary ruling to find out in what circumstances the use of an infringing sign in an advertisement of the goods of a third party seller displayed on an online sales platform can be attributed to the operator of such a platform. The court enquired whether the perception of the public in relation to that offer and advertisement must be taken into account. Further, the court asked whether the fact that Amazon ships goods marked with a sign which is identical with a trade mark constitutes, in itself, use of that trade mark by Amazon.

Judgment
The CJEU decided that the operator of an online sales website may be regarded as using a sign that infringes another’s trade mark, which appears in advertisements and offers for sale of goods from third-party sellers. Such use may be attributed to the operator if a well-informed and reasonably observant user of that website establishes a link between the services of that operator and the sign at issue. Such link will exist where, in view of all the circumstances, such a user may have the impression that that operator itself is marketing, in its own name and on its own account, the goods bearing that sign. Such impression may appear in particular if the operator uses a uniform method of presenting the offers by displaying its own advertisements and those of third-party sellers, places its own logo on its own website and on all those advertisements, it offers third party seller additional services in connection with the goods bearing infringing sign e.g. storing and shipping of those goods.

Comments
The CJUE judgment significantly strengthens the position of trademark holders in combatting trademark infringements on online sales platforms. In the previous case L’Oréal and Others, C-324/09 the CJEU concluded that the operator of an online marketplace does not use signs identical with or similar to trade marks which appear in offers for sale displayed on its site. In the case at hand the CJEU came to a different conclusion, i.e. it
accepted that, in certain circumstances, an operator may be deemed to be using an infringing sign. It is, however, necessary to prove that the user of the website may believe that the operator is marketing the goods bearing the sign that infringes trade mark. Considering that in the described case the operator also sold and advertised its own products and applied the uniform method of advertising both categories of goods, the CJEU
guidelines on attributing liability to online platforms operators seem not to apply to market place operators who do not carry out any sales activities. The jurisprudence of national courts will show whether the application of the CJEU guidelines will also be extended to such platforms.