More protection for Brand Owners..?

Posted Thursday 19th January 2023

In Louboutin v Amazon, the Court of Justice of the European Union (“CJEU”) has recently considered whether online marketplaces could be held directly liable for trademark infringement for offering and advertising counterfeit goods sold by third parties on their respective platforms.

Louboutin brought proceedings against Amazon for infringing Louboutin’s EU trademarked red sole after discovering that counterfeit, red-soled shoes were being sold and advertised on the platform without Louboutin’s consent. Amazon sells their own products on their platform in addition to third-party products and search results will display products from both sellers. Although Amazon was not actively selling the infringing items, it was involved in advertising, storing and distributing the products. As it was unclear whether Amazon could be held directly liable for having infringed Louboutin’s trademark under Article 9(2)(a) of Regulation 2017/1001, the case was referred to the CJEU by the Belgian and Luxembourg courts.

On 22 December 2022, the CJEU held that Amazon and other operators of online marketplaces may be found liable where the users of a platform cannot differentiate between the operator selling the product and/or a third party. In this case, the CJEU ruled that Amazon users had the impression that Amazon was the seller of all products for sale on their platform. This was further reinforced by the packaging and advertising of the products which appeared to be Amazon’s own.

The National Courts will now need to decide on the facts whether Amazon’s actions amount to an infringement and, if so, determine appropriate penalties.  

This decision is a positive outcome for brand owners as it may provide additional protection for their products online. Although the CJEU judgment is not binding in England and Wales, it remains persuasive and indicative of the future legal landscape in respect of counterfeit goods. Online marketplaces should now be wary going forward and consider implementing protective measures to ensure that they are not selling or advertising any counterfeit goods on their platforms.

This article is for reference purposes only. It does not constitute legal advice and should not be relied upon as such. Specific legal advice about your specific circumstances should always be sought separately before taking or deciding not to take any action.

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