[BREAKING] CJEU issues decision in Louboutin's online marketplace trade mark battle

The IPKat would love red, if he could see it

For those who are doing last minute holiday shopping for loved ones, may Merpel suggest some deliciously crafted shoes?   Possibly ones with a red sole?   That red sole has been famous on film, red carpets and in IP circles for many years. It has become even more famous in IP circles thanks to today's Court of Justice of the European Union's decision (currently available in French only) in the joined Louboutin/Amazon cases (C-148/21 and C-184-21) following referrals from the Luxembourg District Court and Brussels Companies Court.  The press release is here (French only).

The referring courts asked the CJEU to consider whether, and under what conditions, the operator of an online marketplace may be found directly liable under Article 9(2) of the EU Trade Mark Regulation 2017/1001 for the display of advertisements and the delivery of infringing goods that are offered for sale and placed on the market upon the initiative and under the control of third party sellers that avail themselves of that operator’s services  (see Eleonora's previous Kat post here summarizing the referrals).  As a reminder for those who do not live and breathe trade mark law, Article 9(2) is the suite of provisions which entitles EU trade mark owners the right to stop third parties from using any sign which is identical or similar to their trade mark in relation to goods or services that are identical, similar or not similar (with some extra requirements) to those for which the EU trade mark is registered.  

The answer?  Yes - and here goes a summary of some rough French translation (with apologies):  An operator can be found liable under Article 9(2) when the normally (reasonably) informed and reasonably observant user of an online marketplace has the impression that the operator of online marketplace is the one who sells, in its own name and on its own behalf, the goods in question.  In particular, this may be the case where an online marketplace displays its own logo on the advertisements of third-party sellers and it carries out the storage and shipping of the third party goods in question.  

The touchstone therefore is, again, whether an operator of an online marketplace is using the sign in its own commercial communication which, of course, turns on the facts.  For example, how is the operator displaying its advertisements (e.g., is it displaying its own advertisements at the same time as those of the third party sellers)?  Is the operator offering additional services to the third party sellers as part of the marketing of their products (e.g., storing and shipping their products)?

This decision is of course opposite to that of the Advocate General's opinion, which was in agreement with Eleonora's opinion that the CJEU should answer the referring questions in the negative.  So, the IPKat eagerly awaits her analysis of this decision, the nuances and, indeed as the Press Release noted, the difficulty in making clear distinctions in these cases as to what constitutes trade mark "use" under the Regulation.  

A press release from Maison Louboutin stated that the "decision will better protect manufactures and consumers against the scourge of counterfeiting.  Christian Louboutin remains committed to protecting its creativity and know-how, as well as those of all brands in the fight against counterfeiting".  Group General Counsel, Xavier Ragot, stated that this was "another victory in the fight against the scourge of counterfeiting, which will benefit all companies that strive for excellence and all consumers looking for authentic, and quality products."  

This is not the end of the story.  It is the referring national court to whom is next in line in this case to decide whether the user has the necessary impression, on the facts, for there to be a finding of infringement.  But in the meantime, this decision will be hotly debated as to whether it has gone too far, not enough or provides clear enough boundaries for national courts in assessing whether there is trade mark use.