French designer Christian Louboutin, known for his red-soled shoes, owns a Benelux trademark for these shoes, registered in 2005, and a European Union trademark registered in 2016.

On September 19, 2019, Christian Louboutin (“Louboutin”) brought an action for infringement against Amazon before Luxembourg and Belgian Courts.

In both cases, Louboutin argued that Amazon used, without his consent, a sign that is identical to his trade mark for goods that are identical to those for which his trade mark is registered, on account of, inter alia, it displaying, on that company’s online sales websites, advertisements relating to goods bearing that identical sign, but also on account of the stocking, shipment and delivery of those goods. According to Louboutin, such use is attributable to Amazon, in so far as that company has played an active role in the use of the sign at issue and the advertisements relating to the infringing goods formed part of its own commercial communication. Amazon cannot therefore be regarded as a mere website host or a neutral intermediary, since it provides assistance to third-party sellers, in particular regarding how best to present their offers.
Amazon challenges whether the use of the trademark can be attributed to it. It maintains that the fact that Amazon’s logo is included in the advertisements of third-party sellers does not mean that it adopts those advertisements. Furthermore, according to Amazon, the ancillary services it offers to third-party sellers cannot justify their offerings being regarded as forming part of its own commercial communication.

The Luxembourg and Belgian Courts decided to stay proceedings and to refer several questions to the Court of Justice of the European Union (hereinafter CJEU). Cases were joined.

By their first question, the Courts ask whether Article 9(2) of Regulation 2017/1001 should be interpreted as meaning that the use of a sign identical with a trade mark in an advertisement displayed on a website is attributable to the website operator or to entities economically linked with it owing to the combination on that website of the operator or its economically linked entities’ own offers and those of third-party sellers, by the incorporation of those advertisements in the operator’s or its economically linked entities’ own commercial communication.

First, the CJEU pointed out that, under Article 9(2) of Regulation 2017/1001, the trademark holder may prevent any third party from using, in the course of trade, any sign which is identical with the trademark in relation to goods or services which are identical with those for which the trade mark is registered. The CJEU stated that, according to its ordinary meaning, the expression “using” involves active behavior and direct or indirect control of the act constituting the use.

The CJEU starts with a detailed examination of the operation of Amazon’s online sales website. It determined that Amazon not only sells its own products but also functions as an online marketplace, facilitating the sale of third-party products by connecting these sellers with the website’s users.

In that respect, the Court held that the use, by a third party of a sign which is identical or similar to the proprietor’s trademark implies, at the very least, that that third-party uses the sign in its own commercial communication.

Therefore, the CJEU states that in order to determine whether an advertisement, published on an online sales website incorporating an online marketplace by a third-party seller active on that marketplace, using a sign which is identical with a trade mark of another person may be regarded as forming an integral part of the commercial communication of the operator of that website, it is necessary to ascertain whether that advertisement may establish a link between the services offered by that operator and the sign in question, on the ground that a well-informed and reasonably observant user might believe that the operator is marketing, in its own name and on its own account, the goods for which the sign in question is being used.

In the overall assessment, the method of presenting the advertisements, both individually and as a whole, on the website in question and the nature and scope of the services provided by the operator of the website are particularly important.

In this regard, the CJEU considered that the fact that an operator uses a uniform method of presenting the offerings published on its website, displaying both its own advertisements and those of third-party sellers and placing its own logo as a renowned distributor on its own website and on all those advertisements, may make it difficult to draw such a clear distinction and thus to give the well-informed and reasonably observant user the impression that that operator is marketing, in its own name and on its own behalf, the goods offered for sale by those third-party sellers. Moreover, the CJEU stated that this impression may be reinforced by the nature and scope of the services provided by the operator such as dealing with the questions of the users relating to those goods or to the storage, shipping and management of returns of those goods.

The CJEU concluded that “Article 9(2)(a) of Regulation 2017/1001 must be interpreted as meaning that the operator of an online sales website incorporating, as well as that operator’s own sales offerings, an online marketplace may be regarded as itself using a sign which is identical with an EU trade mark of another person for goods which are identical with those for which that trade mark is registered, where third-party sellers offer for sale, on that marketplace, without the consent of the proprietor of that trade mark, such goods bearing that sign, if a well-informed and reasonably observant user of that site establishes a link between the services of that operator and the sign at issue, which is in particular the case where, in view of all the circumstances of the situation in question, 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.

In that regard, the following are relevant: the fact that that operator uses a uniform method of presenting the offers published on its website, displaying both the advertisements relating to the goods which it sells in its own name and on its own behalf and those relating to goods offered by third-party sellers on that marketplace; the fact that it places its own logo as a renowned distributor on all those advertisements; and the fact that it offers third-party sellers, in connection with the marketing of goods bearing the sign at issue, additional services consisting inter alia in the storing and shipping of those goods.”