May 2022 The CJEU is set to consider whether the operator of an online marketplace may be held liable for infringement when a third party advertises goods bearing a trade mark without the authorisation of the mark’s owner on its marketplace. In particular, the CJEU will decide the circumstances under which the operator can be held liable, and the circumstances under which liability rests with the third party only.
Background
In 2021, both Luxembourg’s Tribunal d’arrondissement and Belgium’s Tribunal de l’entreprise francophone de Bruxelles referred cases to the CJEU as Case C-148/21 and Case C 184/21, respectively. These referrals asked the CJEU to decide whether the operator of an online marketplace is directly liable for trade mark infringement under Article 9(2) of the EU Trade Mark Regulation 2017/1001 when a third party advertises products bearing a trade mark on its marketplace without the authorisation of the mark’s owner.
Those cases have now been joined and will thus be heard together by the CJEU.
Previously, the CJEU has noted the infringing acts stipulated in Article 9(3) of the Regulation all require an “active behaviour” on the part of the infringer. However, it is notable that the operator of an online marketplace may not exhibit any such “active behaviour” when third parties advertise their products on the marketplace.
Accordingly, it is currently unclear whether the operator of an online marketplace may be held liable for trade mark infringement when infringing goods owned by a third party are advertised thereon.
Topics to be considered by the CJEU
The first question the CJEU is set to answer is whether the operator of an online marketplace can be held liable for infringement if it has played an active role in preparing an advertisement for infringing products sold by a third party, which then gets published on its marketplace.
Secondly, the CJEU will consider whether the operator of an online marketplace can be held liable for infringement if it is well-known amongst the public that the operator is a distributor of third party goods, rather than the source of those goods. As part of this consideration, the CJEU is due to determine whether the operator can be deemed to have used the mark for its own commercial purposes when a third party advertises products bearing the mark on its marketplace, and whether this affects the liability of the operator.
The CJEU is also due to decide whether delivery of third party goods bearing a trade mark without the authorisation of the mark’s owner by the operator of an online marketplace, on behalf of a third party who provided those goods, renders the operator liable for trade mark infringement.
The questions referred to the CJEU in Case C-148/21 can be found here and those referred in Case C-184/21 can be found here.
Conclusion
Should the CJEU decide an operator of an online marketplace can be held liable for infringement when products bearing a trade mark without the authorisation of the mark’s owner are advertised on its marketplace by a third party, it will be interesting to see what actions the operators of online marketplaces may take to address this issue.
Additionally, it will be interesting to see whether the CJEU believes the operators of online marketplaces bear any responsibility at all for preventing third parties from advertising infringing goods on their marketplaces, or whether the CJEU considers this responsibility lies with the third parties only.
