Fashion Law Journal
The function of a trademark is to distinguish the origin of the products or services it indicates, giving consumers an idea of their origin. Likewise, it also serves as a reference, so that the consumer can notice characteristics associated with the quality of the product.
From the legal perspective, in order to protect your trademark you have to register it. The registration of a trademark confers on its owner an exclusive right, which is projected, on the one hand, in a positive sense, since it allows the owner to exploit his trademark and exercise acts of disposition with respect to it, either through the granting of a license or assignment; and on the other hand, in a negative sense, as it allows the owner to protect and / or defend his trademark in the registry sphere (preventing third parties from registering signs that are confused with his trademark) and / or in the commercial sphere (preventing third parties use your trademark or signs that may be confused with your trademark).
Now, although we are clear about direct responsibility in a trademark infringement, that is, when a person infringes our trademark rights, he is responsible for it; we are in doubt when it comes to a third party and, to be more exact, when it comes to an e-commerce platform.
When market structures change, that is, when they are inserted in the online market, several difficulties arise, among them that of determining whether the rules relating to infringements of trademark rights apply extensively to the digital environment or whether they should be established. A particular regime of infringements of trademark rights in the online market. Who should be blamed for offending behavior?
In order to answer this question, we will look at jurisprudence from the United States and the European Union.
- United States of America
- Tiffany vs. eBay
On the one hand, eBay is a well-known e-commerce platform worldwide, in which any user can register to buy and / or sell products.
On the other hand, Tiffany is a luxury brand that specializes in selling jewelry. This has a distinctive sign that consists of a blue box in which they store their jewelry.
The Tiffany brand became aware that on the eBay platform they were selling their counterfeit products, infringing their trademark rights. For which he requested the immediate withdrawal of the products. However, as the infringement grew immeasurably, he decided to file a lawsuit.
The verdict in the first and second instance was the same, since the Court ruled that in order for there to be liability of a third party or the so-called contributory, the e-commerce provider is required to have specific knowledge of the infraction.
- Louis Vuitton Malletier, S. A. Vs. Akanoc Solutions, Inc.
Managed Solutions Group together with Akanoc offer host service around the world and generally, a host provider provides a content storage and maintenance service on its server so that users can connect through a service provider or an access provider, access these content. And get them back.
Louis Vuitton Malletier is a fashion house dedicated to luxury leather goods and they found that the websites that Managed Solutions Group and Akanoc were hosting exposed goods that were infringing their trademarks and copyright. They found that in these sites the sales were not direct, but to finalize the transaction they had to resort to an e-mail address that was listed on the respective website. So, knowing this, they sent several notices to Managed Solutions Group and Akanoc in order to stop the violations of their trademark rights, asking them to remove the infringing websites from their platforms and later, they filed a lawsuit against them.
The District Court determine that the hosts were aware of the offending websites due to removal requests to which they did not respond. On appeal, the Ninth Circuit confirmed the ruling and considered that from the evidence, Managed Solutions Group and Akanoc not only knew about the infraction, but also exercised direct control over the offending media.
From the foregoing, it can be inferred that this decision changed the orientation foreseen in the case Tiffany v. eBay and opened the declaration of responsibility of e-commerce providers regarding infringements of trademark rights committed in online markets.
In conclusion, it can be determined that under North American jurisprudence an e-commerce can have liability when it knows of the specific infringing trademark case.
- European Union
- Coty Germany GmbH vs. Amazon Services
Amazon is an e-commerce platform in which it offers possibilities to third parties to offer their product sales in the “amazon marketplace”.
Coty Germany GmbH is a global beauty company specialized in making cosmetic, skin, fragrance & hair brands and holds a “Davidoff” trademark license.
The Coty brand noticed that its products were being sold without the proper authorization, so in order to verify the trademark infringement, since only they can market “Davidoff” products, it carried out a purchase test of its perfume “Davidoff Hot Water EdT 60ml” that it offered a third seller and shipped the Amazon group, determining that Amazon was indeed offering a product from a person who did not have the proper authorization to market that perfume within the European Union.
Faced with Amazon’s refusal to collaborate, Coty brought legal action against the Amazon group for understanding that it was infringing its trademark rights in order, mainly, to refrain from owning and shipping perfumes with the controversial brand without its authorization – a through the group or third parties – in Germany.
In the first instance, the action brought was dismissed. In second instance, the appeal lodged by Coty was also dismissed in the sense that Amazon Services Europe had not owned or shipped the perfumes and Amazon FC Graben had simply stored these products on behalf of the seller and other third-party sellers.
In view of the foregoing, Coty filed an appeal before the Supreme Court against only the companies Amazon Services Europe and Amazon FC Graben.
The Court of Justice of the European Union (CJEU) resolved by Judgment on April 2, 2020 a preliminary ruling (C-568/18) resolving that in relation to the exploitation of an electronic commerce platform, that it is the selling clients of the operator of this electronic market and not the operator himself who make use of signs identical or similar to trademarks in the sales offers that are presented in such market.
Thus, the CJEU considers that if Amazon, on behalf of a third party seller, only stores goods without being aware that they infringe trademark rights, the conduct cannot be considered as a use of the same, and therefore, it is not committing a trademark offense.
- Christian Louboutin vs. Amazon
The Louboutin brand alleges that Amazon EU has repeatedly broken the law by promoting more than 100 product listings for fake shoes on its websites for France and Germany. In addition, Louboutin says some were designated as “Sponsored Products,” so it asked a Brussels court to ban Amazon’s European arm from offering and selling “high-heeled shoes with red soles,” as this is a “Recognized trademark that Louboutin has worn for over 25 years around the world.”
The first ruling came in March 2020, where the court agreed with the design house and, despite the fact that Amazon rejected the court’s preliminary decision claiming that it could only be applicable to the exact red used by Louboutin and not all reds, the court again ruled against him, saying that the differences between shades of red are “insignificant in the eyes of consumers.”
What’s more, the court also found that Amazon remains liable in the event that counterfeit products are sold and delivered by third parties as EU jurisprudence states that liability “can be attributed to anyone who has played an active role.
Although this is an ongoing case, is important to know it because it will set a precedent whether an e-commerce can be directly liable for trademark infringement.
Conclusion:
We can conclude from the review of the jurisprudence that there is no uniform answer. On the one hand, under North American jurisprudence an e-commerce can be liable if it has had express knowledge of such an infringement. On the other hand, in the European Union there is still no jurisprudence that indicates that an e-commerce may be responsible, so it will be necessary to wait for the resolution of the case of Louboutin vs. Amazon, in order to know the answer
Author: Carolina Cecilia Cano Huachin
