In its judgment of 22 December 2022 (C-148/21 and C-184/21), the ECJ has ruled on the question of the liability of platform operators such as Amazon as a result of trade mark infringement by third-party sellers.

 

The judgment refers to the particularities of Amazon's hybrid business model as a sales platform on which both its own and third-party products are sold. The question arose to what extent the mere provision of the platform can constitute an own use of the platform operator that infringes trade mark rights, if third-party providers commit the actual, direct trade mark infringement.

 

Background

 

The decision was based on a legal dispute between the shoe and bag designer Christian Louboutin and Amazon. Mr Louboutin saw himself exposed to trade mark infringing offers by third party sellers on Amazon and sued Amazon for injunctive relief.

 

In the course of the proceedings, the ECJ was asked whether use within the meaning of Article 9(2)(a) of the EU Trade Mark Regulation (CTMR) by the operator of an online marketplace occurs when third parties offer for sale goods bearing the trade mark without the consent of the proprietor of the trade mark in question. In particular, it was asked whether it is relevant for the assessment that the operator presents the offers published on its platform in a uniform manner.

 

The decision

 

The ECJ has now ruled that it must be assumed that the operator of an online marketplace uses a trade mark infringing sign itself if

 

• third party sellers offer goods for sale on the relevant online marketplace bearing that sign without the consent of the trade mark proprietor, and

 

• a consumer, when using the platform, establishes a connection between the operator's services and the sign in question, which is particularly the case if the consumer gets the impression that the platform operator sells the infringing offers in its own name and on its own account.

 

Relevant here is

 

• that the operator of the online marketplace presents the offers published on his platform in a uniform manner by displaying his own offers and those of third parties together,

 

• that he displays his own logo as a renowned distributor in all these advertisements, and

 

• that he offers additional services to third parties in the context of the distribution of the goods bearing the sign in question, such as storing and shipping these goods.

 

In essence, what matters to the ECJ is therefore whether it is possible for the consumer to distinguish which offers - containing a trade mark infringing sign - originate from the platform operator itself and which from third party providers.

 

Outlook

 

For trade mark owners who are also confronted with trade mark infringing offers by third party providers on platforms such as Amazon, the above outlined concretisation of the ECJ with regard to hybrid platforms means a significant increase in the chances of success to take action not only against individual traders, but especially against the platform operators themselves.

 

However, the operators of online marketplaces may be able to claim the resulting costs from the respective trader.

 

Our experienced litigation team, which has been successfully active in the registration and defense of trade marks for decades, will be happy to advise you. Our Team