Amazon may be liable for trademark infringement after a European Court decision

The European Court has ruled in joined cases C‑148/21 et C‑184/21, Christian Louboutin v Amazon. 

The main issue that focuses our attention, in this case, is whether Amazon can be liable for unauthorized use of trademarks shown in ads of third parties.

As it is well-known, Amazon is the biggest online retailer in the world offering a myriad of goods, directly or through third parties that use Amazon’s platform to sell their products.

The problem arises when these third parties offer fake goods bearing trademarks of other companies without permission and promote them through Amazon ads.

Several months ago, the Advocate General of the EU Court Maciej Szpunar gave its opinion that in such a situation Amazon is not liable for ads that infringe other trademarks, because the company does to use these marks itself.

The European Court, however, disagreed with the Advocate General, and conclude that Amazon may be liable for trademark infringement related to such ads.

The reason for this is the fact that Amazon itself uses ads to promote the same, but original, goods. These ads are very similar to those used by third parties but for fake goods. Thus it is difficult for consumers to make a distinction between the ads which in turn can lead to misleading about the fact that the fake goods can originate from Amazon. From that perspective, Amazon can be held liable for unauthorized trademark use.

In addition, the possible confusion between the ads is enhanced by the fact that Amazon is often involved in the storage, shipping, and management of returns for third-party products on its sites.

Source: Marks & Clerk – Megan Rannard for Lexology.

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A Jeff Bezos’ nonprofit organization lost a trademark dispute in the EU

The Jeff Bezos’ nonprofit organization “The Bezos Family Foundation” lost a trademark dispute in the EU.

The case concerns an EU trademark application ‘Vroom’ filed by the foundation in 2017 for – computer software, specifically “a mobile application for providing information and learning and educational activities and games in the field of early child development and early childhood education.

Against this application an opposition was filed by the France’s national state-owned railway company SNCF Mobilités based on an earlier French trademark for ‘Pop & Vroom’ for software.

The EUIPO upheld the opposition finding both signs and their goods similar enough to create a confusion in the consumer mind.

The decision was appealed. The foundation claimed that both marks were not similar. The reason for this was that the leading element of the earlier mark is POP which attracts consumer’s attention because as a general rule of thumb the first part of a trademark is more important from that point of view. In addition, the goods in the marks target different audiences. While in the case of the foundation’s mark the software focuses on children education, in the case of earlier mark the focus is on a software for transport services.

The General Court of the European Union dismissed the appeal. According to the Court the signs are visually and phonetically similar to average degree. The fact that the first part of the earlier sign is different is not enough to overcome the similarity because for trademark assessment is important the entire impression produced by the sign.

The Court considers that when a trademark owner register its mark for one a general good, in this case software, the owner has the right to use it for different types of software. In this way, the stated difference in consumers targeting is not sufficient argument.

Source: WIPR.

Amazon won a trademark dispute for BEVERLY HILLS POLO CLUB in the UK

Amazon won an interesting lawsuit in the UK. Lifestyle Equities accused Amazon of infringement of a trademark BEVERLY HILLS POLO CLUB owned by the company.

The reason for this accusation was the fact that products sold on amazon.com and their prices were been visible for consumers in the UK and EU as a whole.

As it is well-known, a trademark owner has the right to prohibit parallel import and sales of products labeled with a trademark in another country. The logic behind this is that the trademark owner has the right to determine its distribution and price policy for every country where its trademark is registered.

In the case at hand, products with the trademark BEVERLY HILLS POLO CLUB were sold through amazon.com in four main ways:

• Amazon Exports-Retail – customers purchased products from amazon.com and they are delivered to the UK/EU;

• FBA Export – third parties sell via amazon.com while Amazon manages everything related to the logistics and shipping;

• MFN Export – third parties sell via amazon.com but Amazon does not handle the logistics;

• Amazon Global Store – consumers on amazon.co.uk can access listings for products on amazon.com.

According to the Court there is no trademark infringement by Amazon.

In two of the options – FBA Export and MFN Export sales are done by the relevant sellers not Amazon itself.

In the rest of the options Amazon is not liable too. The reason for this is that Lifestyle Equities required from Amazon in 2018 to restrict any sales from amazon.com under the same brand in the UK and the EU. Amazon took the necessary technical measures and restricted the sales with some minor exceptions which the Court considered negligible.

The Court concluded that Amazon had no intention for such sales through amazon.com in Europe although the their price were visible for consumers in the EU.

In addition, the Court pointed out the Amazon’s Terms and Conditions according to which in case of purchasing through amazon.com the consumer is the ‘importer of record’ and gained title to the products in the US.

Source: RPC – Samuel Coppard and Matt Davies for Lexology.

Breaking news – Amazon repelled an attack by Coty after an EU Court decision

The European court has ruled in the case C‑567/18 Coty Germany GmbH  v Amazon. The case concerns the following background:

Coty, a distributor of perfumes, holds a licence for the EU trade mark DAVIDOFF registered under No 876 874 (‘the mark at issue’), which enjoys protection for ‘perfumes, essential oils, cosmetics’.

Amazon Services Europe enables third-party sellers to place offers for sale in respect of their goods in the ‘Amazon-Marketplace’ section of the website http://www.amazon.de. In the event of sale, contracts concerning those goods are concluded between the third-party sellers and the purchasers. Those third-party sellers may also avail themselves of the ‘Fulfilment by Amazon’ scheme, under which goods are stored by Amazon group companies, including Amazon FC Graben, which operates a warehouse. Those goods are dispatched by external service providers.

On 8 May 2014 one of Coty’s test purchasers ordered on the website http://www.amazon.de a bottle of ‘Davidoff Hot Water EdT 60 ml’ perfume that was offered for sale by a third-party seller (‘the seller’) and dispatched by the Amazon group under that scheme. After Coty sent a letter of formal notice to the seller on the ground that the rights conferred by the mark at issue were not exhausted in respect of the goods consigned by the seller to Amazon FC Graben under that scheme, those goods not having been put on the market in the European Union under that trade mark by the proprietor or with its consent, the seller signed a cease-and-desist declaration, coupled with a penalty clause.

By letter of 2 June 2014, Coty requested Amazon Services Europe to return all the bottles of perfume bearing the mark at issue stocked on behalf of the seller. Amazon Services Europe sent Coty a package containing 30 bottles of perfume. After another company belonging to the Amazon group informed Coty that 11 out of the 30 bottles sent originated from another seller’s stock, Coty requested that Amazon Services Europe disclose the name and address of that other seller, as the rights conferred on 29 out of the 30 bottles by the mark at issue had not been exhausted. Amazon Services Europe replied that it was not in a position to accede to that request.

Taking the view that Amazon Services Europe’s conduct, on the one hand, and that of Amazon FC Graben, on the other, infringed its rights in the mark at issue, Coty requested, in essence, that those two companies be ordered, subject to penalties, to desist, in the course of trade, from stocking or dispatching ‘Davidoff Hot Water’ brand perfumes in Germany, or from causing them to be stocked or dispatched, if those goods were not put on the Union market with Coty’s consent. It requested, in the alternative, that the same order be made against those companies in relation to ‘Davidoff Hot Water EdT 60 ml’ brand perfumes and, in the further alternative, that the same order be made against them in relation to ‘Davidoff Hot Water EdT 60 ml’ brand perfumes which have been stored on behalf of the seller or which cannot be attributed to another seller.

The Regional Court, Germany dismissed the action brought by Coty. The appeal brought by Coty was dismissed, with the court of appeal holding, inter alia, that Amazon Services Europe had neither stocked nor dispatched the goods concerned and that Amazon FC Graben had kept those goods on behalf of the seller and other third-party sellers.

Coty brought an appeal on a point of law (Revision) before the referring court. Only Amazon Services Europe and Amazon FC Graben are respondents before that court.

The referring court states that whether that appeal is successful, in so far as Coty disputes the court of appeal’s finding that Amazon FC Graben is not liable as a perpetrator of an infringement of trade mark rights, depends on the interpretation to be given to Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001.

In particular, it emphasises that whether the appeal on a point of law is successful depends on whether those provisions are to be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stocks those goods in order to offer them or put them on the market for the purposes of those provisions, even if it is only the third party who intends to offer those goods or put them on the market.

The referring court also states that, since Coty bases one of its claims on the risk of a repeat infringement, its action is well founded only if the conduct of the Amazon group companies in question is established to be unlawful both at the material time in the main proceedings and when the decision on the appeal on a point of law is issued.

In those circumstances, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to stay the proceedings and to refer the following question to the Court of Justice for a preliminary ruling:

‘Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?’

The Court’s decision:

Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark and Article 9(3)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark must be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not itself pursue those aims.

Amazon failed to register its RING trademark in the EU

Amazon lost a dispute in Case T‑270/19 v EUIPO before the General Court of the European Union.  The case concerns an attempt by the US company to register the following EU trademark:

The mark was applied for:

Class 9: ‘Consumer electronic products, namely, doorbells, motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled doorbells; electronic doorbells; electronic doorbells with a camera allowing persons to identify who is at their door from remote locations; motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; electronic wireless LAN enabled motion sensors and monitoring equipment, namely, video monitors and video cameras for monitoring the interior and exterior of homes, retail stores, or offices for security and surveillance; downloadable software and software applications permitting users to identify and communicate with persons at their door; downloadable software and software applications permitting users to monitor their home, office and other facilities; downloadable applications for monitoring a user’s home, office and other facilities, for use over the internet, mobile devices, wireless internet networks or systems and other computer and electronic communication networks; speakers; wireless local area network enabled speakers; customisable electronic speakers; computer application software for use in controlling and managing speakers, wireless local area network enabled speakers, customisable electronic speakers; luminous signs; electric signs; electronic signs; backlit signs; lighting controllers; lighting control apparatus; electric control devices for lighting fixtures; computer software for sharing videos; computer application software for sharing videos; computer application software for mobile phones and other mobile devices, namely, software for sharing videos’.

The EUIPO rejected the registration of this mark based on absolute grounds. According to the Office, the sign is completely descriptive for the mentioned goods and cannot serve as a source of trade origin.

Amazon appealed argued that the mark applied for was only suggestive or allusive, and not communication particular characteristics of the goods.

The Court dismissed the appeal stating that the mark was completely descriptive for the relevant goods and in that way not able to indicate trade origin. According to the Court  “the verbal element “ring”, which means in particular to “make a clear resonant or vibrating sound”, immediately informed the consumers, without their further thought, that the goods in question, “doorbells, motion sensors, monitoring equipment, namely video monitors and video cameras”, include a system to enable them to produce a clear resonant or vibrating sound.”

Amazon defended its SPARK brand in the UK

Amazon won a dispute before the UK Patent Office against a word trademark application for “SPARKK” in class 9 for goods including computer application software, mobile applications, and software for social networking services.

The opposition was based on the earlier trademark “Amazon Spark” for the same class of goods.

The UKIPO upheld the opposition stating that although Amazon is the first word in the earlier mark, Spark has a roughly equal contribution to the overall impression of the sign.

What’s more, the additional letter K in the later mark is not enough to overcome the possible consumer confusion. This is supported by the fact that Amazon is a distinctive and well-known mark and because of this consumers may think that SPARKK is just another sub-brand related to “Amazon Spark” .

Source: WIPR.

Book publishers accused Audible of a copyright infringement

TBO reports about a new lawsuit initiated by several US book publishers against Amazon’s Audible.

As it is well-known Audible is a service that offers audiobooks. The dispute arose when Audible announced its new feature which will allow the narrative from the audiobooks to be transformed into a text that can be used by the consumers of their service.

According to the publishers, this act is against their copyright over the books because there is no particular license that allows such transformation and subsequent distribution.

The other problem is that the quality of these texts could not be satisfying because of technical issues which means that the texts will be different from the original works.