Online sales website itself uses a trade mark if a well-informed user may be confused07-09-2023 Print this page
Infringing use of a trade mark 9(2)(a) Regulation 2017/1001. The operator of an online sales website incorporating, as well as that operator’s own sales offerings, an online marketplace may be regarded as itself using an EU trade mark where third-party sellers offer for sale, on that marketplace, without the consent of the proprietor of that trade mark, such goods bearing that sign, if a well-informed and reasonably observant user of that site establishes a link between the services of that operator and the sign at issue, which is in particular the case where, in view of all the circumstances of the situation in question, such a user may have the impression that that operator itself is marketing, in its own name and on its own account, the goods bearing that sign.
In that regard, the following are relevant
(a) the fact that that operator uses a uniform method of presenting the offers published on its website, displaying both the advertisements relating to the goods which it sells in its own name and on its own behalf and those relating to goods offered by third-party sellers on that marketplace;
(b) the fact that it places its own logo as a renowned distributor on all those advertisements; and
(c) the fact that it offers third-party sellers, in connection with the marketing of goods bearing the sign at issue, additional services consisting inter alia in the storing and shipping of those goods.
Mr Louboutin is a French designer whose best-known goods are high-heeled women’s shoes. Since the mid-1990s, he has added to his high-heeled shoes an outer sole in a red colour (Pantone 18-1663TP). That colour, applied to the sole of a high-heeled shoe, is registered as a Benelux trade mark under the Benelux Convention on intellectual property (trade marks and designs) of 25 February 2005/ That trade mark has been registered as an EU trade mark since 10 May 2016. Amazon operates websites selling various goods which it offers both directly, in its own name and on its own behalf, and indirectly, by also providing a sales platform for third-party sellers. The shipping of goods offered for sale on that online marketplace may be handled either by those sellers or by Amazon, which then stocks those goods in its distribution centres and ships them to purchasers from its own warehouses.Those websites regularly display advertisements for red-soled shoes which, according to Mr Louboutin, relate to goods which have been placed on the market without his consent.
In order to determine whether an advertisement, published on an online sales website incorporating an online marketplace by a third-party seller active on that marketplace, using a sign which is identical with a trade mark of another person may be regarded as forming an integral part of the commercial communication of the operator of that website, it is necessary to ascertain whether that advertisement may establish a link between the services offered by that operator and the sign in question, on the ground that a well-informed and reasonably observant user might believe that the operator is marketing, in its own name and on its own account, the goods for which the sign in question is being used.
The Court clarifies that relevant for this assessment is the fact that the company Amazon uses a uniform method of presentation of offers for sale published on its website, displaying at the same time its own advertisements and those of the third-party sellers. Amazon also displays its own reputable distributor logo on all such advertisements and offers additional services to these third-party sellers as part of the marketing of their products, consisting in particular in the storage and shipping of their products.
Indeed, these circumstances may make it difficult to make a clear distinction and give the normally informed and reasonably attentive user the impression that it is Amazon who markets, in its name and for its own account, Louboutin products offered for sale by third-party sellers.