05 January 2023

The Court of Justice of the EU (“the CJEU”) decided on 22 December 2022 that Amazon might be held responsible for advertising 'fake' red-soled high-heeled shoes which potentially breach top-end designer shoemaker Christian Louboutin's EU trademark.

Although not a final decision, this is moving closer towards a world in which Amazon would no longer be able to pass the buck to its third-party sellers for trade mark (and potentially design or copyright) infringement.

Louboutin brought two cases in Belgium and Luxembourg in 2019 alleging Amazon regularly displayed adverts for “fake” red-soled shoes on its marketplace without Louboutin's consent. The two courts then asked the CJEU to determine whether, and, if so, under what conditions, the operator of an online marketplace could be found liable under Article 9(2) of the EU Trade Mark Regulation 2017/1001 for the display of advertisements of infringing goods.

In its ruling the CJEU said Amazon could potentially be considered responsible for alleged intellectual property breaches found in the advertisements of counterfeit shoes featuring the famous red sole. Users of the platform might believe it was Amazon - and not a third-party seller - who marketed the product "in its name and on its behalf”.

The key was that Amazon offered a mix of its own products and third-party offerings on its platform and provided other services such as storage and shipping, unlike, say, eBay, which just offered third-party products. Louboutin argued that Amazon wrongly used the trademarked red sole for products identical to its own and that the advertisements for these third-party products were an integral part of Amazon's commercial offering. That would mean that Amazon could be held accountable for the breaches as if it was the seller of the fake goods.

The Court of Justice of the European Union said it was now up to two national courts, in Belgium and Luxembourg, to decide the matter by interpreting the CJEU’s guidance and determining the likelihood of consumer confusion. Not seeking financial compensation, Louboutin simply wants the breaches to stop.

The decision is potentially game-changing for trademark (and potentially copyright and design) infringement on online marketplaces and would help consumers easily identify the true seller of any goods (and whether something might be real or fake).

Platform providers should immediately review their offerings and ensure that it is crystal clear where every product originates and who is selling it, to avoid public confusion and intellectual property rights infringements. Sellers of goods and creators should keep an eye out on sales platforms (and in particular Amazon) to check if someone is selling their products without their permission.

For more information contact Brian Levine Head of Media, Entertainment and Intellectual Property email 01935 846258.