Brussels court grants Louboutin inhibitory decision against Amazon

Were you sad because you thought that your favorite IP-related saga [I am, of course, referring to the Louboutin Red-sole saga, the C- 163/16 preliminary ruling before the Cour of Justice of the European Union covered by The IPKat here , here and here and the following decision by the referring court, the Court of The Hague, covered by The IPKat here] had come to an end?

Dry your tears because a new tasty spin-off of the Louboutin red sole enforcement efforts is here!

In early August, the Chambre des actions en cessation du tribunal de l’entreprise francophone de Bruxelles (hereinafter: the Brussels court) handed down an inhibitory decision (here in French) concerning Louboutin red sole and its infringement by Amazon Europe core sarl, Amazon EU sarl and Amazon services europe sarl.

Background

In the context of the tools implemented by Amazon to avoid the sale of counterfeit goods, including counterfeit Louboutin shoes, Louboutin affirmed that the efficacy of these tools were “toute relative” [quite relative].

Consequently Louboutin claimed before the Brussels Court the infringement of its trade mark based on two different types of use by Amazon:

• The use of an identical red sole sign on the Amazon web site for advertising without its consent;

• The stocking for delivering of the shoes

This Kat is dreaming about its new pair of red sole high heels shoes

Amazon based its defence on the limited scope of protection of the trade mark at stoke and on the lack of use of the trade mark.

Let’s see how the Brussels court reasoned.

Analysis

The scope of protection of the trade mark

First of all, the court recalled that, according to case LTJ Diffusion C-291/00:

Since the perception of identity between the sign and the trade mark is not the result of a direct comparison of all the characteristics of the elements compared, insignificant differences between the sign and the trade mark may go unnoticed by an average consumer.

Consequently the scope of the protection of the trade mark is not limited to the reproduction of the Pantone 18.16663 TP colour (for which Louboutin trade mark has been registered) but also covers other types of red when the difference is insignificant for the average consumer.

The use of the sign

Advertising

In limine, the Brussels court noted that the concept of advertising is harmonised by article 2(a) directive 2006/114:

‘advertising’ means the making of a representation in any form in connection with a trade, business, craft or profession in order to promote the supply of goods or services, including immovable property, rights and obligations

The court recognised that Amazon used the red sole sign in advertising related not only to the Louboutin’s shoes but also to Amazon’s services and goods, for example on the online newspaper “The Guardian” where the trade marks Amazon and its arrow and “Prime” were combined with the offer for sale of counterfeit red sole shoes.

Moreover the court recalled case Daimler C-179/15:

With regard, first, to the wording of Article 5(1), it must be noted, by way of example that, according to its ordinary meaning, the expression ‘zu benutzen’, ‘using’, ‘faire usage’, ‘usare’, ‘het gebruik’, ‘használ’, used respectively in the German, English, French, Italian, Dutch and Hungarian versions of that provision, involves active behaviour and direct or indirect control of the act constituting the use. However, that is not the case if that act is carried out by an independent operator without the consent of the advertiser, or even against his express will.

The Brussels Court considered the three different Amazon’s services:

• delivered and sold by Amazon;

• delivered by Amazon but sold by a third;

• deliver and sold by a third but “sponsored” by Amazon;

and held that all the advertising regarded the commercial activity of Amazon and the promotion of its own services, no matter the ownership of the goods.

Stocking and delivering

Regarding the stocking, the Brussels Court held that that could be deduced from the phrase “Only 1 left in stock” while, according to the court, the delivering of the goods by Amazon had not been proved by Louboutin.

For all these reasons the court prevented Amazon trom using a sign identical to the red sole sign for high heels shoes, setting a penalty for non-compliance at EUR  50.000,00 per day.

Conclusion

With this decision Louboutin got a new – important – win in the protection of its trade mark and we – IP-enthusiasts – got a new decision, which is interesting not only from a trade mark prospective but with regard to the interplay between trade marks and liability of online intermediaries.