While the Belgian law has just transposed the Omnibus Directive at the end of May 2022 and imposes more obligations on e-commerce platforms and while obligations on e-commerce platforms are tending to become more stringent in all respects, the advisor (Advocate General) of the European Court of Justice has just issued an opinion in favor of the absence of liability of e-commerce platform operators for infringements of the rights of trademark owners taking place on their platform as a result of commercial advertisements made by third parties as such practice do not constitute in the “use” of a sign within the meaning of EU law.

You no longer need to present Mr. Christian Louboutin’s iconic red outer sole of a shoe that are registered as EU and Benelux trademarks.

The Amazon websites regularly display advertisements for red-soled shoes which Mr. Louboutin claims relate to goods which are counterfeits and/or advertised and offered without his consent.

Mr. Christian Louboutin has therefore initiated two actions, both in Luxembourg and Belgium, against Amazon for trademark infringements. He claims that the online platform has “used” a sign that is identical to its trademarks for identical goods and services without his consent and emphasizes in particular the fact that the advertisements at issue form an integral part of Amazon’s commercial communication.

The two Courts have referred to the ECJ (C-148/21 and C-184/21) and asked, in particular, whether Amazon can be held directly liable for the infringement of the rights of trade mark proprietors on its platform and whether the “use” of a sign in an advertisement could engage the liability of the online marketplace when consumers may consider that the advertisement is attributable to the marketplace (event though such advertisings were made by third party sellers and not by Amazon).

Following Article 9, paragraph 2, of the EU Trademark Regulation, any “use” of a protected sign in the course of trade, without the consent of its proprietor, constitutes an infringement of the rights acquired by that proprietor. Paragraph 3 of Article 9 of the Regulation enumerates a non-exhaustive list of prohibited “uses”, including the use in advertising, the offering or the stocking of counterfeit goods.

As a reminder, the EU e-commerce directive 2000/31 established a protective principle according to which online intermediaries who host or transmit content provided by a third party are exempt from liability, unless they are aware of the illegality of the content and refrain from acting to remedy the situation.

In its argumentation, (besides two pleas of inadmissibility) Amazon stresses that it does not “use” the signs at issue, since, as the operator of an online marketplace, it cannot be held liable for the content published on its websites. Louboutin, on the other hand, stipulates that Amazon has in this particular situation a role of a distributor of the goods sold on its websites and that the advertisements placed by third-party sellers form part of Amazon’s own commercial communication and insists on the fact that the principles applicable to online marketplaces are not applicable here due to Amazons’ particular role and due to the fact that the contentious marketing campaign uses Amazon’s logo and branding.

The advisor to the EU Court of justice notes that the operating method of Amazon consists of a combination of advertisements placed, on the one hand, by Amazon for its own products and, on the other, by third-party sellers.

The advisor to the EU Court of justice also notices that “it is always specified, in the advertisements, whether the goods are sold by third-party sellers or sold directly by Amazon”.

Accordingly, “the mere fact that Amazon’s advertisements and those from third-party sellers appear next to each other does not entail that a reasonably well-informed and reasonably observant internet user might perceive the signs displayed in the advertisements of third-party sellers as an integral part of Amazon’s commercial communication”.

Therefore, the advisor is of the opinion that Amazon did not “use” the trademark in a prohibited way.

The final decision of the European Court of justice shall be important here as to understand the obligations and liabilities of online intermediaries. We shall of course keep you informed as soon as the final decision is published.

Blandine de Lange

Lawyer

blandine.delange@moov.law