In a landmark decision issued just before Christmas, and contrary to an earlier opinion given by the Advocate General, the Court of Justice of the European Union (CJEU) has ruled that online marketplaces can be held liable for counterfeits sold by third parties.

The judgment, which at the time of writing has not yet been published in English, was handed down in the joined Louboutin/Amazon cases (C-148/21 and C-184-21) following referrals from the Luxembourg and Brussels courts, which had sought guidance on when online marketplaces might be found directly liable for advertising and delivering counterfeit goods placed on their platforms by third parties.

The CJEU confirmed that operators of online marketplaces could be found liable when users of the marketplace have the impression that the marketplace is the one selling the goods in question – for example when the marketplace’s logo is used on adverts and the marketplace stores and ships the goods.

It will be for the national courts in Luxembourg and Brussels to decide whether, on the facts, the instances complained of by Louboutin amount to trade mark infringement by Amazon.

In terms of the application of this decision in the UK, CJEU decisions do not bind the Courts of England & Wales but remain persuasive.

The decision is likely to divide opinion. For brand owners like Louboutin, the decision will be welcomed in the fight against counterfeit goods: they say it will protect online consumers from buying counterfeit goods. However, for others the decision will be considered to go too far: the marketplace should not be directly liable for infringements taking place on its platform as a result of third party offerings when the marketplace itself does not use the trade mark.

Emily Roberts, Harry Jewson