Amazon sells directly and indirectly. When it sells directly, it does so in its name and for its benefit. When Amazon sells indirectly, it relies on third-party sellers to whom it offers support in the presentation of advertisements and offers to support the storage and shipping of goods. The results of a query on Amazon platforms appear regardless of the product’s origin. Consequently, the consumer does not know whether such a good is sold directly by Amazon or a third party. French designer Christian Louboutin blames Amazon for this uniform mode of displaying the results and the products in the context of trademark infringement actions pending before the courts of Luxembourg and Belgium, both having decided to stay proceedings pending response to preliminary questions.
Both cases were therefore brought before the Court of Justice of the European Union (CJEU), leading to preliminary questions on a possible liability of Amazon for infringement resulting from the use of the illustrious red sole trademark (color corresponding to Pantone code 18-1663TP or “Chinese red”). What uses are we talking about? On the one hand, the use of the trademark in the context of commercial advertising, the trademark being displayed in an undifferentiated manner, thus obstructing transparency as to the origin of the products. On the other hand, the use of the trademark during the storage and the dispatch, by Amazon, of counterfeit products bearing the said trademark and sold by third parties.
On December 22, 2022, the Court of Justice of the European Union (CJEU) cleared the way for Amazon’s liability for trademark infringement:
“the operator of an online sales website integrating, in addition to its own offers for sale, an online marketplace, is likely to be considered as itself using a business sign identical to a European Union trademark of a third party for goods identical to those for which this trademark is registered, where third-party sellers offer for sale, on this marketplace, without the consent of the owner of the said trademark, such products bearing this business sign, if a normally informed and reasonably attentive user of this site establishes a link between the services of this operator and the sign in question, which is particularly the case when taking into account all the elements characterizing the situation in question, such a user could have the impression that it is the said operator who markets itself, in its name and for his account, the products bearing the said sign. In this regard, relevant are the facts that this operator uses a uniform method of presentation of the offers published on its website, displaying at the same time the advertisements relating to the products which it sells in its name and for its account and those relating to products offered by third-party sellers on the said marketplace, as well as the fact that the operator displays its renowned distributor logo on all of these advertisements and offers to third-party sellers, within the framework of the marketing of products bearing the sign in question, additional services consisting in particular in the storage and dispatch of these products” (CJUE, 22 décembre 2022, Christian Louboutin c. Amazon, C‑148/21 et C‑184/21: curia.europa.eu).*.
Thus, the CJEU paves the way for recognizing and accepting Amazon’s liability for trademark infringement. In some respects, the facts are relatively close to those which gave rise to the Coty II judgment (CJEU, Coty v. Amazon, April 2, 2020, C‑567/18: curia.europa.eu), which is strongly questionable (iptwins.com, 2020-04-09). The difference is in Amazon’s role in shipping products. Indeed, in one case, the goods were shipped by a third party (Coty II judgment), while in the other, they were shipped by Amazon (Christian Louboutin v. Amazon). It follows from the Coty II ruling that Amazon cannot engage its liability when it takes care of the storage but not the shipping. In its judgment of December 22, 2022 (Christian Louboutin v. Amazon), the CJEU expressly indicates that the provision to third-party sellers of complementary services constitutes relevant facts to consider that Amazon makes use of the trademark, including storage and shipping. Paragraph 23 of the Louboutin decision also refers to “additional services consisting of providing [third-party sellers] support in the presentation of their advertisements” (CJUE, 22 décembre 2022, Christian Louboutin c. Amazon, C‑148/21 et C‑184/21: curia.europa.eu). It would have been appropriate to add this “support in the presentation of advertisements” within the answer to the question referred to avoid ambiguity and to facilitate the fight against online counterfeiting.
* Unofficial translation, the CJEU translation into English not being available on the day of publication of this article.
