The Supreme Court of Europe has ruled that operators of platforms such as Amazon should not actually tell consumers whether those products are provided by Amazon or by their reseller when their reseller offers counterfeit goods. If it is obvious, it has ruled that you may commit trademark infringement.
Dec 22, 2022 for Louboutin v Amazon[1], the Court of Justice of the European Union (CJEU) has issued an important judgment regarding hybrid platform trademark infringement liability. Hybrid platforms such as Amazon not only offer the product itself as a retailer, but also open up the electronic marketplace to distribution partners who offer products to their accounts. Products offered by the platform itself are often mixed with products offered by partners. The platform often also provides fulfillment services such as product storage and shipping for its distribution partners.
Louboutin is a famous French designer, best known for his high-heeled women’s shoes with red soles. Louboutin regularly takes action against copies of the shoes her Amazon partners offer on platforms such as Amazon.
The lawsuits in Luxembourg and Belgium show to what extent Amazon itself is liable for trademark infringement of these offers, since Amazon does not sell the infringing shoes itself, but at best only by the party that oversees the electronic marketplace. In this regard, the Belgian and Luxembourg courts referred the question of interpretation to the CJEU as it concerns EU law.
Previously, in a dispute between Coty and Amazon[2]CJEU found that Amazon itself is not responsible for trademark infringement of the products provided by the partner, even though Amazon provides the so-called fulfillment consisting of storage and delivery to the partner.
The court now appears to have overturned this ruling.
Courts have held that in some circumstances operators of hybrid platforms such as Amazon, which integrate online marketplaces in addition to their own sales offers, may also be found to be using the infringing trademark itself (thus, itself may be liable). for marketing the infringing product), even if the product is provided by her Amazon partner.
According to the court, such situations arise when it’s not really obvious to the average consumer whether it’s Amazon or the sales partner offering the infringing product. A relevant situation here is that Amazon’s products and sales partners are simply presented interchangeably, and Amazon advertises both types of offers, displaying the Amazon logo in its advertisements. The fact that Amazon also provides fulfillment services, such as warehousing and shipping, for products offered by our resellers reinforces the consumer’s impression that the product comes from Amazon.
The ruling has been welcomed by trademark owners and will make it easier for them to take action against the marketing of counterfeit and parallel imports in the online marketplace.
