The District Court of Luxembourg and the Tribunal des entreprises francophones de Bruxelles, Belgium (joined cases), in the respective proceedings in which LOUBOUTIN is bringing actions against AMAZON for trade mark infringement, referred a number of preliminary questions to the Court of Justice, which may be summarised as follows: whether Article 9(2)(a) of Regulation 2017/1001 must be interpreted as meaning that the operator of an online sales website which, in addition to its own sales offers, includes an electronic marketplace, may itself be regarded as using a sign identical to another EU trade mark for goods and services. They question whether it is relevant in that regard for that operator to use a uniform method of presentation of the offers published on its internet site, in which the advertisements for the goods which it sells in its own name and on its own account and those for the goods offered for sale by third party sellers on that marketplace appear at the same time, to include its own logo as a reputable distributor in all those advertisements and, in connection with the marketing of its products, to offer third party sellers additional services consisting in providing them with support in the presentation of their advertisements and in the storage and dispatch of the products offered on the same marketplace. In that context, the referring courts also seek to ascertain whether the perception of the users of the internet site in question should be taken into account, where appropriate.

The uniqueness of this case relates to the fact that the question referred to the Court includes the relevance and importance to be attached to the perception of the users of the site in question and to other circumstances, such as the fact that the operator uses a uniform mode of presentation of the sales offers published on its Internet site, displaying both its own advertisements and those of third party sellers and including its own reputable distributor logo in all such advertisements, as well as the fact that it offers complementary services to such third party sellers in the context of the marketing of their products, such as support in the presentation of their advertisements and the storage and dispatch of their products. This question was not raised by the national courts in the cases which gave rise to the earlier judgments, relied on by the parties, of 2 April 2020, Coty Germany and 12 July 2011, L’Oréal and Others.

On this occasion, in its reply to the questions referred, the Court introduces the element of relevance and the importance to be attached to the perception of the users of the site in question and to other circumstances, in order to assess the existence of an infringement not only of the third party seller, but also of the operator of the online sales website which, as part of an electronic marketplace, makes use, as the case may be, in its own commercial communication, of a sign identical to another person’s trade mark, for goods identical to those for which that trade mark is registered, so that it could be held liable for infringement of the rights of the proprietor of that trade mark within the meaning of Article 9(2)(a) of Regulation 2017/1001, where the third party seller offers for sale on that marketplace such goods bearing that sign.

The grounds of the judgment point out that ‘commercial communication of an undertaking’ generally means any form of communication addressed to third parties, intended to promote its business, goods or services or to indicate the exercise of that business. Thus, the use of a sign in the undertaking’s own commercial communication means that third parties may regard that sign as forming an integral part of the undertaking’s commercial communication and thus as falling within the undertaking’s business. If the operator of an internet site for online sales which is part of an electronic marketplace itself uses a sign identical to another person’s trade mark in advertisements relating to goods offered by third party sellers on that marketplace, it must be assessed whether a reasonably well-informed and reasonably attentive user of that internet site would establish a link between the services of that operator and the sign in question. That is to say, whether he could believe that it is that operator who markets in his own name and on his own account the product for which that sign is used.

In the overall assessment of the circumstances of the case, the way in which the advertisements are presented, both individually and as a whole, on the internet site concerned and the nature and extent of the services provided by the operator of that site are of particular importance. In the light of the foregoing, the Court replies to the national courts as follows:

Article 9(2)(a) of Regulation 2017/1001 must be interpreted as meaning that the operator of an online sales website which integrates, in addition to its own sales offers, an electronic marketplace may itself be regarded as using a sign identical to another EU trade mark, for goods identical to those for which the trade mark is registered, where third party sellers offer for sale on that marketplace, without the consent of the proprietor of the trade mark, such goods bearing that sign, if a reasonably well-informed and reasonably observant user of that site establishes a link between the services of that operator and the sign in question. That is the case, in particular, where, in the light of all the factors characterising the situation, that user might have the impression that it is that operator who himself markets, in his own name and on his own account, the goods bearing that sign. It is relevant in that regard that that trader uses a uniform method of presentation of the offers published on its internet site, displaying at the same time the advertisements for the goods which it sells in its own name and on its own account and those for the goods offered by third party sellers on that market, that it includes its own well-known distributor logo in all those advertisements and that it offers third party sellers, in connection with the marketing of the goods bearing the sign in question, additional services consisting, inter alia, in the storage and dispatch of those goods.

CJEU of 22 December 2022. (Case C-148/21 LOUBOUTIN V, AMAZON).