Amazon has recently found itself on the losing side of a landmark decision of the EU’s Court of Justice (‘ECJ’) in relation to a case referred by the national courts of Luxembourg and Belgium who were seeking clarity as to when online marketplaces might be found directly liable for advertising and delivering counterfeit goods placed on their platforms.
The case concerned Louboutin and the well known ‘red sole’ (which is a registered EU trade mark) on the eponymous shoes and third parties selling shoes with red soles without Louboutin’s consent to such marketing on Amazon.
Mr Louboutin claimed that at by displaying the disputed advertisement on its online store and assisting in the stocking, shipment, and delivery of the counterfeit goods, Amazon cannot be regarded as a neutral intermediary.
In a previous case the ECJ had held, a service provider (Amazon) who creates the technical conditions necessary (hosting of a website) for the use of an infringing trade mark and is remunerated for that service but does not itself make use of that sign cannot be held liable if the sign infringes a trade mark.
In this Louboutin case however the ECJ found that the facts were different because Amazon also sells its own products or resells and distributes third parties’ goods. Such an operator may be regarded making use of an infringing trade mark identical or similar to another person’s EU trade mark where the reasonably well-informed and reasonably observant internet user has the impression that it is the service provider who is marketing, in its own name and for its own account, the infringing goods in question.
This line of reasoning appears to me to refer Amazon’s rather unwieldy and confusing interface whereby it may not always be 100% clear whether a particular item is being sold by Amazon themselves or by a third party without many clicks and checks!
In summary, the ECJ confirmed that operators of online marketplaces could be found liable when users of the marketplace have the impression that the marketplace is the one selling the goods that infringe a registered EU trade mark, for example when the marketplace’s logo is used on adverts and the marketplace stores and ships the goods.
If you have concerns about your goods or services for sale on an online market place or if you have received a ‘take down’ notice from the owner of a registered trade mark or other form of intellectual property, Briffa can help you assess your options and next steps.
Contact email@example.com for more information.
Written by Mark Eiffe – Solicitor
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