Violation of trade mark rights

Facts

Ch. Louboutin adds to the pins a red outer sole whose colour on the Pantone scale is code 18–1663TP. This colour, applied to the sole of a advanced heels shoe, is registered as a Benelux trade mark and as a European Union trade mark.

Disputes between Ch. Louboutin and companies Amazon concerning the alleged usage of markings identical to the EU trade mark Ch. Louboutin is the owner, without his consent, of goods which are identical to those for which the mark has been registered.

The preliminary rulings have been interpreted by Article 9(2)(a) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14.6.2017 on the trade mark of the European Union (OJ L L 154, p. 1) as to the liability of the operator of the website.

TEU position

The intent of Article 9 of Regulation 2017/1001/EU is to granting the proprietor of an EU trade mark a legal instrument allowing him to prohibitand thus the end of any usage of that trade mark by a 3rd party, without his consent. The Court recalled that use by a 3rd party a mark identical to or akin to a trade mark within the meaning of Article 9(2) of Regulation 2017/1001/EU requires at least that that mark be by it used in its own commercial communications. With respect to the operator of the online trading platform (hereinafter referred to as the operator), the TEU considered that the usage of marks identical to or akin to trade marks in the offers displayed on that platform is made only by sellers are customers of the operator of this platform and not by himself, due to the fact that the second does not usage this designation in its own commercial communications.

The Court found that to the referring courts an assessment should be madewhether in each of the cases identified Amazon as an operator, uses an identical mark to the trade mark in question for goods which are identical to those for which that mark has been registered within the meaning of Article 9(2)(a) of Regulation 2017/1001/EU. The TEU has given these courts the interpretative guidance based on EU law essential for this assessment.

The Court concluded that ‘commercial communication‘means any form of communication addressed to 3rd parties to advance or indicate the pursuit of its activities, goods or services. The Court has already held that, where a service supplier uses a mark identical to or akin to a trade mark belonging to another entity for the purposes of promoting goods which 1 of its customers sells by means of that service, that service supplier uses that sign itself erstwhile utilizing it in specified a way that a link arises between the designation afraid and the services provided by that service provider (judgment of the TEU of 12.7.2011, L’Oréal and Others., C-324/09, paragraph 92, Legalis). According to the TEU, specified a relation exists erstwhile an operator, utilizing an online referral service and utilizing a keyword identical to a trade mark belonging to another entity, advertises the goods marked with that trademark, sold by its customers on its online trading platform. specified advertising creates a clear connection between these branded goods and the anticipation of acquiring them through this platform. Therefore, according to the CSF, the proprietor of that trade mark is entitled to prohibit that operatorsuch use, where that advertising infringes the right to a trade mark on the grounds that it does not, or only in difficulty, let a decently informed and sufficiently attentive net user to know whether the goods originate from the proprietor of that trade mark or from an undertaking linked to it economically, or on the contrary, from a 3rd organization (judgment of L’Oréal and Others., points 93, 97).

About presentation TEU notices indicated that the request for transparent display of notices on the net is provided for in Union e-commerce legislation. Notices displayed on the website of online sales with an integrated online trading platform must so be presented in specified a way as to let a decently informed and sufficiently attentive user to separate between offers from the operator of the website and external sellers operating on the online trading platform with which this website is integrated (statement L’Oréal and Others., point 94). The fact that specified the operator uses a uniform way of presenting offers published on its website, i.e. at the same time displays its own advertisements and advertisements of external sellers, and places its own logo of a reputable distributor on both its website and in all these advertisements (including goods offered by external sellers), may hinder specified a clear distinction. The above may origin properly informed and sufficiently attentive user the impression that this operator besides sells goods offered for sale by these external sellers on his own behalf and on his own account. Consequently, where these goods bear a mark identical to a trade mark belonging to another entity, the TEU considers that specified a uniform presentation may have the effect of making these users feel the link between this designation and the services provided by that operator.

Furthermore, according to the TEU nature and scope of services provided by the operator to external sellers who offer on this platform goods bearing the mark (such as services consisting in peculiar of answering users' questions concerning those goods or storage, dispatch and management of the returns of those goods) may besides give the informed and sufficiently attentive user the impression that these goods are sold by that operator on his behalf and on his own account.

In conclusion, the TEU ruled that Article 9(2)(a) of Regulation 2017/1001/EU should be interpreted as meaning that the operator of an online sales site including, in addition to its own offers of sale, an online trading platform may be considered to be an entity utilizing an identical mark to an EU trade mark belonging to another entity in respect of goods identical to those for which that mark was registered. This is the case where external vendors offer for sale on this platform, without the consent of the owner of that mark, specified goods bearing that sign, if the decently informed and sufficiently attentive user of this website perceives the link between the services of that operator and the designation in question. This is peculiarly the case where, in the light of all the elements characterising the situation, the user could have the impression that the above operator is selling, on his own behalf and on his own account, goods bearing that designation. It is crucial in this respect that this operator applies a uniform method of presentation of tenders published on its website, i.e. it besides displays notices on goods which it sells on its own behalf and on its own account, and notices on goods offered on that platform by external sellers, that it places on all these advertisements the logo of a reputable distributor and that it offers external sellers, in the course of the sale of goods bearing that designation, in addition to services consisting in peculiar of the retention and dispatch of their goods.

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