This article was written in collaboration with Marianna Riedo
Advocate General Maciej Szpunar delivered his opinion in
Joined cases C-184/2021 and C-148/2021initiated by the famous French shoe designer Christian Louboutin against Amazonin its dual capacity as a supplier – an online marketplace – and as a distributor of products.
The referral to the Court of Justice of the European Union (CJEU) concerned the online sale of counterfeit products, and in particular if the perception of a “Reasonably informed and reasonably attentive internet useris relevant to determining whether the online service provider’s use of the mark is identifiable in the context of advertisements for goods from independent sellers on the online marketplace it operates.
THE DISPUTED FACTS
The CJEU’s preliminary question relates to Amazon’s business model, which the AG defines as “hybrid“, because Amazon operates both as a distributor and as an operator of an online marketplace. Indeed, Amazon displays on its platform both advertisements for its own products, which it sells and ships to consumers under its own brand, and advertisements for third-party products. It also offers third-party sellers additional services, such as storage and shipping of products advertised on its platform, informing potential buyers that it will be responsible for such activities.
The trademark infringement complained of by Christian Louboutin, a French shoe designer, concerns the red outsole (Pantone 18.1663TP) for women’s high-heeled shoes, which he has registered as a trademark in the EU and Benelux.
Louboutin claims that advertisements for red-soled shoes regularly appear on the Amazon platform, referring to products put on the market without its consent. For this reason, Louboutin filed two lawsuits against Amazon, in Luxembourg (before Luxembourg district court) and in Belgium (Brussels French-speaking business court), alleging that the company has used a sign identical to its mark for goods or services identical to those for which its mark is registered.
According to the designer, Amazon direct responsibility stems from the fact that advertisements that constitute trademark infringement are an integral part of Amazon’s commercial communication.
Both courts then referred their cases to the CJEU, asking whether the operator of a hybrid marketplace could be considered
directly responsible for trademark infringement due to the presence of third-party lists of counterfeit products on its platform.
The main question and the object of the two references for a preliminary ruling is whether “Article 9(2) of Regulation 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark [is] must be interpreted as meaning that the use of a sign identical to a trade mark in an advertisement displayed on a website is attributable to the operator of the website or to entities economically linked to it by reason of the combination on this website of the operator or its economically linked entities own offers of the entities and those of third-party sellers, by the incorporation of these advertisements in the own commercial communication of the operator or its economically linked entities.“
Article 9(2) of Regulation 2017/1001 (the European Trademark Regulation, “EUTR“), which reproduces the provision of Article 9(1) of Regulation No 207/2009, provides that the proprietor of a European Union trade mark may prevent third parties, in the absence of his consent, to “use” in the course of trade a sign identical to the mark if this sign is used for goods and services identical to the goods or services for which the mark is registered. the EUTMR does not define the concept of “use”; instead, it was referred to the interpretation of CJEU case law.
Relevant to the case, and according to the AG, Amazon’s “hybrid” business model creates a new context for analyzing the issue, thus providing the court with an opportunity to clarify, on the one hand, the notion of ” use” and, on the other hand, the principles that should govern the direct liability of ISSPs in cases of trademark infringement.
The AG developed its analysis on the basis of the case law of the Court itself, concluding that this case law confirms that the application of the concept of “use” of the mark calls for consideration of a platform user’s point of view. He then analyzed the implications of such an approach to determine whether Amazon, due to the
specificities of its economic model“uses” in fact a mark present in an advertisement published on its platform.
CONCLUSIONS OF AG SZPUNAR
In its conclusions, the AG clarified the concept of “use” of the mark by an online service provider, which, according to it, must be identified from the point of view of a user of the platform in question (a “Reasonably informed and reasonably attentive internet user“). He clarified that the case law of the Court clearly indicates that
the actual “use” by an ISP necessarily implies, at the very least, that the third party ISP uses the sign in its own commercial communication.
In short, the Advocate General confirmed that the “use” can be identified when the recipient of such communication creates a specific link between the ISSP and the brand. This condition must be assessed from the platform user’s point of view to determine whether the sign appears to him as part of a commercial communication.
Moreover, with regard to the impact of Amazon’s commercial practices on the recognition of the “use” of the mark under EU law, the Advocate General noted that the analysis does not focus on the examination of the product or service bearing the sign in question, but only on the service provider’s commercial communication, in order to determine whether the brand is perceived by users of the platform as being used directly by the service provider in the context of its activity. To this end, while noting that commercial offers from third parties and from Amazon are presented in a uniform manner and that each of them includes Amazon’s brandthe Advocate General said that advertisements always specify whether the goods are sold by third-party sellers or directly by Amazon.
Therefore, the mere fact that Amazon’s advertisements and those of third-party sellers appear side by side does not mean that a reasonably informed and reasonably observant Internet user would perceive the marks displayed on the advertisements of third-party sellers as forming an integral part of the offer from Amazon. commercial communication. The same applies to the complementary services of assistance, storage and dispatch of products bearing an identical sign to a mark, Amazon having also actively contributed to the preparation and presentation of these products for sale.
The Advocate General concluded that, based on the circumstances of these two cases, the following circumstances are not relevant for the purposes of “use”, considering that the provider of an online marketplace:
- on the one hand, publishes its own offers and those of third parties without distinguishing between them according to their origin and by displaying its own well-known distributor logo on the said advertisements both on its own site and in the advertising sections of third-party websites; and
- on the other hand, offers third-party sellers complementary services, such as assistance, storage and shipping services for the products presented on its platform and thus informs potential buyers that it will be responsible for providing these services .
The foregoing does not imply that Article 9(2) EUTMR should be interpreted as meaning that the provider of an online marketplace “uses” a trade mark in an offer for sale published by a third party on this platform. This is the case as long as points (a) and (b) above do not encourage a “reasonably informed and reasonably attentive Internet user” to perceive the mark in question as an integral part of the service provider’s commercial communication.
THE IMPACT OF AG SZPUNAR’S OPINION BEFORE THE FINAL DECISION
In his opinion, the Advocate General provided additional details to define the scope of liability of hostsWhich one is a hot topic in the field of intellectual property with respect to both copyright (for example, YouTube/Cyando1) and trademark law. More interestingly, however, while the extensive case law developed so far in this area addresses the question of whether direct liability under trademark law could arise by reason of specific acts or omissions of a platform operator (for example, L’Oreal vs Ebay2), in this new opinion, the AG explored what type of liability may arise based on the hybrid business model that underpins the relevant market. It remains to be seen how the Court will ultimately rule on these joined cases.
The distinction between primary and secondary liability of ISPs, in the context of copyright and trademark law, does not seem to cease to be a widely debated issue anytime soon, and is also central to the discussion around the bill on digital services. As the AG also pointed out in its opinion, the relationship between intellectual property protection and ISP liability requires reconciling competing interests adopting a careful application of the safe harbors set out in the regulations.
1. Decision of 22 June 2021, joined cases C-682/18 and C-683/18, EU:C:2021:503.
2. Decision of 12 July 2011, case C-324/09, EU:C:2011:474.
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