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Is Amazon liable for trade mark infringements committed by third parties?

9 January 2023

ECJ, Judgment of 22.12.2022 – C-148/21, C-184/21

Louboutin’s best-known goods are luxury red-soled women’s shoes. He has registered the red colour of the outer sole as a protected trade mark in the EU, among other countries.

Third-party adverts appeared on the online marketplace Amazon for shoes with red soles, which Louboutin says are being marketed without his consent. The designer sees this as his trade mark rights also being infringed by Amazon and has therefore sued the company in Belgium and Luxembourg.

Louboutin claimed that use as a trade mark had occurred, in particular by displaying adverts for goods with such an identical sign on Amazon’s online sales platforms, but also by possessing, shipping and delivering such goods. Such use was attributable to Amazon, as it had played an active role in the use of the sign in question and the adverts for the infringing goods had been part of its own commercial communication. Amazon could not therefore be regarded as a mere website hosting provider or as a neutral intermediary, especially since it provided assistance to third parties, in particular in optimising the presentation of their offers.

Amazon denied that it could be held accountable for the use of a sign identical to the mark in question. It relied on several judgments of the Court of Justice in cases involving online marketplace operators such as eBay to argue that it too, as the operator of such a marketplace, could not be held liable for the use of a sign identical to the mark in question by third party sellers using its online marketplace. Amazon’s marketplaces, which are integrated into its online sales platforms, are operated in a very similar way to other marketplaces.

The courts in Belgium and Luxembourg decided to stay the proceedings and let the Court of Justice clarify in advance under which circumstances the use of an infringing sign in a third-party sales offer can be attributed to the operator of a sales platform with an integrated online marketplace.

The ECJ stated that it is ultimately up to the national courts to assess whether there has been an infringement of trade mark rights. However, it clarified that what is relevant for the assessment is whether a well-informed and reasonably observant user of the platform establishes a link between the services of that operator and the sign in question, particularly when such a user, taking into account all the circumstances of the case, may be under the impression that the operator is the one selling the goods bearing the sign in its own name and for its own account. In this regard, it is relevant that the operator presents the offers published on its platform in a uniform manner, by displaying the adverts for the goods sold in its own name and for its own account together with the adverts for the goods offered by third parties on the marketplace in question, that it displays its own logo as a reputable distributor on all of these adverts and that it offers additional services to third parties to assist with the distribution of the goods bearing the sign in question, for example the storing and dispatching these goods.

By showing its own adverts and those of third-party sellers at the same time, and by displaying its own logo on all of these adverts, Amazon makes it difficult to make a clear distinction and gives a well-informed and reasonably observant user the impression that the Louboutin products offered for sale by third-party sellers are being marketed by Amazon on its behalf and for its own account.

With this landmark decision, the European Court of Justice is now holding the online giant Amazon responsible and has thereby confirmed Louboutin’s view.

This decision shows us that trade mark owners can now take action not only against individual traders but also against the marketplace operator if there is a trade mark infringement and the requirements set by the ECJ are met.

Henriette März

Trade Mark group

This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.

© Withers & Rogers LLP January 2023