Amazon not liable for fake Louboutin shoes, says EU advisor

Online retail giant Amazon should not be held liable for the sale of counterfeit Christian Louboutin shoes sold on its platform, according to an advocate general advising the European Court of Justice (CJEU).

The advisory opinion from Advocate General Maciej Szpunar – available here – notes that while intermediary online retail platforms like Amazon make this of counterfeiting activity "technically possible," they "cannot be held directly liable for infringements of the rights of trademark holders taking place on its platform as a result of commercial offerings by third parties."

The opinion clarifies the concept of 'use' of the trade mark by an online intermediary, which, in Szpunar's view, should be applied from the perspective of a user of the platform in question.

The advocate general points out in that regard that it is clear from the settled case-law of the Court that the act of use by an internet intermediary presupposes, "at the very least, that that third party uses the sign in its own commercial communication."

"The mere fact that Amazon’s advertisements and those from third-party sellers appear next to each other does not entail that a reasonably well-informed and reasonably observant internet user might perceive the signs displayed on the advertisements of third-party sellers as an integral part of Amazon’s commercial communication.

"The same applies to the additional services of assistance, stocking and shipping of goods bearing a sign identical to a trade mark, in respect of which Amazon has also actively contributed to the preparation and publication of the offers for sale."

Szpunar is therefore of the opinion that "in those circumstances, the operator of an online platform such as Amazon does not use a sign." He concludes that "it is always specified, in the advertisements, whether the goods are sold by third-party sellers or sold directly by Amazon."

While not a definitive verdict in the case, the likelihood is that the CJEU will follow the advice when it rules on the case later this year.

Louboutin's complaint is that because Amazon regularly displays on its websites advertisements for shoes that mimic Louboutin's iconic and trademarked red-soled styles and fulfils orders for them, without the designer's consent, it should share responsibility with third-party sellers for trademark infringements.

Louboutin brought cases against Amazon in Belgium and Luxembourg claiming that the retailer plays an active role in allowing the trademark infringement to take place and "does not merely provide a neutral service, creating the technical conditions necessary for others to commit" the unlawful acts.

It won the early rounds in the disputes, which were then referred to the CJEU for a final judgment.