Joined Cases C‑148/21 and C‑184/21
Christian Louboutin
v
Amazon Europe Core Sàrl (C‑148/21)
and
Amazon EU Sàrl (C‑148/21),
and
Amazon Services Europe Sàrl (C‑148/21)
and
Amazon.com Inc. (C‑184/21)
and
Amazon Services LLC (C‑184/21)
(Request for a preliminary ruling from the tribunal d’arrondissement de Luxembourg)
Judgment of the Court (Grand Chamber), 22 December 2022
(Reference for a preliminary ruling – EU trade mark – Regulation (EU) 2017/1001 – Article 9(2)(a) – Rights conferred by an EU trade mark – Concept of ‘use’ – Operator of an online sales website incorporating an online marketplace – Advertisements published on that marketplace by third-party sellers using, in those advertisements, a sign which is identical with a trade mark of another person for goods which are identical with those for which that trade mark is registered – Perception of that sign as forming an integral part of the commercial communication of that operator – Method of presenting the advertisements which does not make it possible to distinguish clearly the offerings of that operator from those of the third-party sellers)
1. EU trade mark – Effects of the EU trade mark – Rights conferred by a trade mark – Right to prohibit the use of the mark – Concept of use
(European Parliament and Council Regulation 2017/1001, Art. 9(2))
(see paragraphs 25-31)
2. EU trade mark – Effects of the EU trade mark – Rights conferred by a trade mark – Right to prohibit the use of the mark – Concept of use – Operation of an online marketplace – Existence of a link between the operator’s services and the sign at issue – Included – Method of presenting the advertisements – Nature and scope of services provided by the operator – Effect
(European Parliament and Council Regulation 2017/1001, Art. 9(2))
(see paragraphs 38-43, 48-54, operative part)
Résumé
Since 2016, Mr Louboutin, a French designer of luxury footwear and handbags, has registered the colour red, applied to the outer sole of a high-heeled shoe, as an EU trade mark.
Amazon operates websites selling various goods which it offers both directly, in its own name and on its own behalf, and indirectly, by providing a sales platform for third-party sellers. That operator also offers third-party sellers the additional services of stocking and shipping their goods.
Mr Louboutin stated that those websites regularly display advertisements for red-soled shoes which, in his view, relate to goods which have been placed on the market without his consent. Then, alleging an infringement of the exclusive rights conferred by the mark at issue, he brought two actions for infringement against Amazon before the tribunal d’arrondissement de Luxembourg (District Court, Luxembourg, Luxembourg) (1) and the tribunal de l’entreprise francophone de Bruxelles (Brussels Companies Court (French-speaking), Belgium). (2)
Each of those courts then decided to refer a number of questions to the Court of Justice for a preliminary ruling.
In essence, they asked the Court whether the EU trade mark regulation (3) must be interpreted as meaning that 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 a sign which is identical with an EU trade mark of another person for goods which are identical with those for which that trade mark is registered where third-party sellers offer goods bearing that sign for sale on that marketplace without the consent of the trade mark proprietor.
They are unsure, inter alia, whether the following are relevant in that regard: 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; the fact that it places its own logo as a renowned distributor on all those advertisements; and the fact that it offers third-party sellers, in connection with the marketing of their goods, additional services consisting in providing them support in the presentation of their advertisements and in storing and shipping goods offered on the same marketplace. In that context, the referring courts also ask whether it is necessary to take into consideration, where appropriate, the perception of the users of the website in question.
The Court, sitting as the Grand Chamber, had the opportunity to provide important clarifications on the issue of the direct liability of the operator of an online sales website incorporating an online marketplace for infringements of the rights of the proprietor of an EU trade mark resulting from the fact that a sign which is identical with that mark appears in advertisements from third-party sellers on that marketplace.
Findings of the Court
It must be recalled that, under the EU trade mark regulation, (4) the registration of an EU trade mark confers on its proprietor the right to prevent all third parties from using, in the course of trade, any sign which is identical with that trade mark in relation to goods or services which are identical with those for which the mark is registered.
The Court notes at the outset that the concept of ‘using’ is not defined by the EU trade mark regulation. Nevertheless, that expression involves active behaviour and direct or indirect control of the act constituting the use. Only a third party which has such control is effectively able to stop the use of a trade mark without the consent of its proprietor.
The use, by a third party, of a sign which is identical with or similar to the proprietor’s trade mark also implies, at the very least, that that third party uses the sign in its own commercial communication. A person may thus allow its clients to use signs which are identical with or similar to trade marks without itself using those signs. The Court thus considered that, with regard to the operator of an online marketplace, the use of signs which are identical with or similar to trade marks in offers for sale displayed on that marketplace is made only by the sellers which are customers of that operator and not by the operator itself, since the latter does not use that sign in its own commercial communication.
The Court observes, however, that, in its earlier case-law, it was not asked about the impact of the fact that the online sales website in question incorporates, as well as the online marketplace, sales offers of the operator of that site itself, whereas the present cases specifically raise the issue of that impact. Accordingly, in the present case, the referring courts are uncertain whether, in addition to the third-party seller, the operator of an online sales website incorporating an online marketplace, such as Amazon, also uses, in its own commercial communication, a sign which is identical with a trade mark of another person for goods which are identical with those for which that trade mark is registered, and may thus be held liable for the infringement of the rights of the proprietor of that trade mark where that third-party seller offers goods bearing that sign for sale on that marketplace.
The Court finds that that issue arises irrespective of the fact that the role of that operator may, where appropriate, also be examined from the point of view of other rules of law and that, although the assessment of such use by the operator is ultimately a matter for the national court, it may provide elements of interpretation under EU law which may be useful in that regard.
In that connection, as regards commercial communication, the Court states that the use of a sign which is identical with another person’s trade mark by the operator of a website incorporating an online marketplace in its own commercial communication presupposes that that sign appears, in the eyes of third parties, to be an integral part of that communication and, consequently, a part of its activity.
In that context, the Court notes that, in a situation in which the operator of a service uses a sign which is identical with or similar to the trade mark of another person in order to promote goods which one of its customers is marketing with the assistance of that service, that operator does itself make use of that sign if it uses it in such a way that it establishes a link between the sign and the services provided by that operator.
Accordingly, the Court has held that such an operator does not itself make use of a sign which is identical with or similar to a trade mark of another person when the service it provides is not comparable to a service aimed at promoting the marketing of goods bearing that sign and does not imply the creation of a link between the service and that sign, since the operator in question is not apparent to the consumer, which excludes any association between its services and the sign at issue.
On the other hand, the Court has held that such a link does exist where the operator of an online marketplace, by means of an internet referencing service and on the basis of a keyword which is identical with a trade mark of another person, advertises goods bearing that trade mark which are offered for sale by its customers on its online marketplace. For internet users carrying out a search on the basis of a keyword, such advertising creates an obvious association between those trade-marked goods and the possibility of buying them through that marketplace. That is why the proprietor of that trade mark is entitled to prohibit that operator from such use, where that advertising infringes the trade mark right owing to the fact that it does not enable well-informed and reasonably observant internet users, or enables them only with difficulty, to ascertain whether those goods originate from the proprietor of that trade mark or from an undertaking economically linked to that proprietor or, on the contrary, from a third party.
The Court concluded from this that, in order to determine whether the operator of an online sales website incorporating an online marketplace does itself make use of a sign which is identical with a trade mark of another person, which appears in the advertisements relating to goods offered by third-party sellers on that marketplace, it is necessary to assess whether a well-informed and reasonably observant user of that website establishes a link between that operator’s services and the sign in question.
From that point of view, in order to determine whether an advertisement, published on that 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 part of the commercial communication of the operator of that website, it is necessary to ascertain whether it is capable of establishing a link between the services offered by that operator and the sign in question, on the ground that a user might believe that the operator is marketing, in its own name and on its own behalf, the goods for which the sign in question is being used.
The Court highlights that, in the overall assessment of the circumstances of the present case, the method of presenting the advertisements, both individually and as a whole, on the website in question and the nature and scope of the services provided by the operator of the website are particularly important.
As regards, first, the method of presenting the advertisements, EU law requires transparency in the display of advertisements on the internet, so that a well-informed and reasonably observant user can distinguish easily between offers originating from the operator of the website and from third-party sellers active on the online marketplace. However, the Court considers that the operator’s use of a uniform method of presenting the offers published, displaying both its own advertisements and those of third-party sellers and placing its own logo as a renowned distributor on its own website and on all of the advertisements may make it difficult to draw such a distinction and thus give the impression that that operator is marketing, in its own name and on its own behalf, the goods offered for sale by those third-party sellers.
Second, the nature and scope of the services provided by the operator of an online marketplace to sellers, and in particular the services consisting of the storage, shipping and management of returns of those goods, are also likely to give the impression, to a well-informed and reasonably observant user, that those same goods are being marketed by that operator and thus establish a link, in the eyes of those users, between those services and the signs placed on those goods and in the advertisements of third-party sellers.
In conclusion, the Court rules that the operator of an online sales website incorporating, as well as that operator’s own sales offers, an online marketplace may be regarded as itself using a sign which is identical with an EU trade mark of another person for goods which are identical with those for which that trade mark is registered, 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 behalf, the goods bearing that sign. The Court adds that the following are relevant in that regard:
• 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;
• the fact that it places its own logo as a renowned distributor on all those advertisements; and
• 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.