Christian Louboutin has had success at the Court of Justice of the European Union (“CJEU”) against Amazon in relation to his famous red sole. The CJEU ruled that Amazon could be liable for infringement of intellectual property on its platform by third-party sellers.

Louboutin’s famous red sole (colour Pantone 18-1663TP, to be exact) has been registered as an EU trade mark since May 2016. The online marketplace sells products 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. It also offers support to third-party sellers through adverts, storage and shipping of their products.

Mr Louboutin’s complaint was that as part of this, Amazon was displaying adverts for allegedly counterfeit, red-soled shoes being sold by third-parties on the platform which infringed his trade mark. Mr Louboutin filed trade mark infringement proceedings in both Switzerland and Belgium against Amazon, allegedly that Amazon had played an active role in the infringing trade mark use. Both courts stayed the proceedings and referred questions to the CJEU on whether, and under what conditions, the operator of an online marketplace may be found directly liable under Article 9(2)(a) of the EU Trade Mark Regulation 2017/1001 for the display of adverts and the delivery of infringing goods that are offered for sale under the control of third-party sellers, who also use the operator’s support services.

As a reminder, Article 9(2) entitles owners of EU trade marks to prevent third parties from using any sign which is identical to their trade mark in relation to goods or services that are identical to those for which the EU trade mark is registered.

Crucial to the CJEU’s analysis was that the results of a search query on Amazon platforms appear uniform regardless of the products' origins. It noted that the products are only described as ‘bestsellers’ or ‘most sought after’ or ‘most popular’. This therefore made it difficult for even a “well-informed and reasonably observant user” of the platform to distinguish between those offered by Amazon and those offered by third parties. The use of these labels, along with the additional services offered by Amazon to third-party sellers, only added to a likely link in the eyes of the users, between the infringing product and Amazon. It ruled therefore that the consumer is not able to distinguish whether a product is sold directly by Amazon or a third party.  

This was in line with what the judge said in Lush v Amazon in 2014. In that case, Amazon were using the word “Lush” as a keyword in Google Adwords and its own search function. The use as a Google Adword gave results including a sponsored link advert directing the user to a link on the Amazon website, despite the fact that Amazon did not sell any Lush products in the UK. The judge ruled that an average consumer would not be able to determine whether or not the goods in the advert were Lush products.

The CJEU differentiated this case from another, similar case also involving Amazon (the Coty II judgment), where it found Amazon could not be liable for trade mark infringement on its marketplace in relation to third-party sellers. The difference was that in Coty, Amazon just performed storage facilities for the third-party seller. It was important that it did not pursue the aim of offering the goods for sale or putting them on the market for its on benefit. With Louboutin, the CJEU noted that the storage, shipping and management of returns of the infringing goods was offered by Amazon and that Amazon also placed its own logo on adverts for the infringement goods.

It is now back to the courts in Belgium and Switzerland to apply this and continue the national proceedings.