The matter at hand
Louboutin is a designer best known for his high-heeled women’s shoes, on the soles of which he applies a specific shade of red. The red sole is registered as an EU and a Benelux trade mark.
Amazon operates a so-called hybrid online marketplace, selling goods which it offers both directly, in its own name and on its own behalf, and indirectly, by providing a sales platform for third-party sellers. On its platform, regularly red-soled shoes are offered which, according to Mr Louboutin, have been placed on the market without his consent.
Louboutin brought actions against Amazon before the referring courts, tribunal d’arrondissement Luxembourg (District Court, Luxembourg) and tribunal de l’entreprise francophone de Bruxelles (Brussels Companies Court, Belgium), and sought a declaration that Amazon was liable for infringement of the trade mark at issue.
Both courts referred the matter to the ECJ, asking whether the rights conferred by a trade mark (inter alia Article 9(2)(a) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark) entail that a hybrid platform may be regarded as itself using, and thus potentially infringing a trade mark, where third-party sellers offer for sale, on that hybrid online marketplace, goods bearing that sign. In this regard, the referring courts raise several circumstances that they believe may be relevant in this regard, notably when that operator publishes its own offers and those of third-party sellers in a uniform manner, when it displays its own logo on all those advertisements, and when it offers other services to third-party sellers, like marketing support, stocking and shipping.
The judgment of the ECJ
Upon addressing these questions, the ECJ first reiterates its earlier findings in, among others, case C-567/18 (Coty/Amazon), most notably that the ‘use’ of a trade mark “involves an active behaviour and direct or indirect control of the act constituting the use” (paragraph 27) and that such ‘use’ “implies, at the very least, that that third-party uses the sign in its own commercial communication” (paragraph 29). The ECJ then refers to its earlier application of these criteria on operators of online market places, where it had held that use of signs “in offers for sale displayed on that marketplace is made only by the sellers who are customers of that operator and not by the operator itself, since the latter does not use that sign in its own commercial communication” (paragraph 30), irrespective of whether the offering of these services is in the operators own financial interest (paragraph 31).
This does however not imply that the same applies to the online marketplace as described by the referring courts. Although, in reality, this is the same online market place (Amazon), the ECJ stresses that the referring court in case C-567/18 (Coty/Amazon) “had made it clear that that operator was unaware of the fact that the goods at issue infringed a trade mark right, that it had not itself offered the goods concerned for sale or put them on the market and that it also did not intend to do it itself” (paragraph 33) and that it (the ECJ) was “not asked in that case about the impact of the fact that the online sales website in question incorporates, as well as the online marketplace, sales offers of the operator of that site itself” (paragraph 34).
These different circumstances may however be crucial upon answering the question whether the operator of an online market place does itself ‘use’ a sign. In particular, the ECJ considers it relevant whether that use “appears, in the eyes of third parties, to be an integral part of the communication and, consequently, a part of that undertaking’s activity” (paragraph 40). "In order to determine whether the operator of an online marketplace does itself make use of a sign, which appears in advertisements relating to goods offered by third-party sellers on that marketplace, it is necessary to assess whether a well-informed and reasonably observant user of that website establishes a link between that operator’s services and the sign in question” (paragraph 43).
The ECJ then continues to apply this criterion to the specific circumstances of the present case, by considering that, in this regard, “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” (paragraph 49). Upon addressing the method of presenting the advertisements, the ECJ inter alia holds that advertisements on a hybrid online marketplace “must be presented in a way which enables a well-informed and reasonably observant user to distinguish easily between offers originating, on the one hand, from the operator of that website and, on the other, from third-party sellers active on the online marketplace which is incorporated therein” (paragraph 50).