AG Szpunar advises CJEU not to extend direct liability for trade mark infringement to operators of online marketplaces

· trade marks,use,platforms,Louboutin,Amazon

Is the operator of an online marketplace (more specifically: a hybrid marketplace, which also provides logistics assistance to third-party sellers through a fulfilment programme) using third-party trade marks itself, in accordance with Article 9(2) EUTMR, when it displays, on its marketplace, advertisements of independent sellers’ goods that infringe such trade mark rights, which it also delivers to end customers? Is the perception of a reasonably well informed and reasonably observant internet user relevant when undertaking such an assessment?

These are the key issues on which the Court of Justice of the European Union (CJEU) has been requested to provide guidance. Joined cases Louboutin/Amazon, C-148/21 and C-184/21 are referrals for a preliminary ruling made in the context of highly similar proceedings pending before, respectively, Luxembourg’s Tribunal d’arrondissement (C-148/21) and Belgium’s Tribunal de l’entreprise francophone de Bruxelles (C-184/21).

Yesterday, Advocate General (AG) Szpunar issued his Opinion [not yet available in English] in which he advised the CJEU to rule that, at the conditions described by the referring courts, a marketplace operator would not be directly liable for trade mark infringement.

Let’s see how the AG reasoned.

Preliminary remarks

The AG began his Opinion noting how the topic of intermediary liability has always raised novel questions over time. This, he noted, is unsurprising considering the relevance of the internet to our societies and also the circumstance that the internet has been creating new intermediation models.

From an IP perspective, it is “easily understandable” (“agevolmente comprensibile”) that rightholders seek to establish the liability of operators when counterfeits are being sold through their platforms, also because of the difficulties connected with the identification and localization of individual sellers.

This said, the interests of rightholders cannot be considered in isolation and cannot, on their own, justify a finding of liability of platform operators due to third-party infringements. Account should be taken of the circumstance that this could entail imposing a general monitoring obligation (contrary to Article 15 of the Ecommerce Directive) and make it generally more difficult to innovate online.

Notion of “use”

Turning to the substance of the referrals, the AG noted that the notion of use is not defined in the EUTMR. It has been the CJEU, through its case law, that has provided guidance on how it is to be intended.

The notion of “use” thus requires an active behaviour/conduct and a direct or indirect control over the act constituting use. The rationale of all this is to allow the trade mark proprietor to prohibit any unauthorized use of their trade mark by a third party that is effectively able to stop such use and therefore comply with that prohibition. This is connected to the well-established principle according to which no one can be legally obliged to do the impossible.

With specific regard to intermediaries, the CJEU has held that an intermediary that renders a service in connection with the marketing of goods, including by providing the technical conditions necessary for the use of the sign, but that neither offers the goods nor puts them on the market itself does not use the relevant signs for its own commercial communication.

Referring to the judgments in Google France,