Going after trademark infringement online

Phoebe Mae U. Reyes

On December 22, 2022, the Court of Justice of the European Union ruled in the case of Christian Louboutin vs. Amazon. Mr. Louboutin is a designer of luxury goods known for his trademark over the color red (Pantone 18-1663TP) applied to the sole of high-heeled shoes, which has been registered since 2005 under the Benelux Convention and in the European Union (EU) since May 10, 2016.

Mr. Louboutin sued for infringement against popular e-commerce platform Amazon before the District Court of Luxembourg, which later referred the case to the Court of Justice for preliminary ruling. The complaint is based on the premise that Amazon sold goods on its website, both directly and through third-party sellers, and had also been advertising such goods. The goods involved in the case were shoes that infringed on Mr. Louboutin’s trademark, with a claim that Amazon had played an active role in the infringement by allowing its online sellers to use another’s trademark through advertisements on its website.

The EU court ruled that since Amazon allows the use of another’s trademark in advertisements on its website, it established a link between its services and Mr. Louboutin’s trademark in the eyes of a well-informed and reasonably observant user of the website. It said Article 9(2) of Regulation 2017/1001 should be interpreted to mean that an online marketplace such as Amazon, which allows third-party sellers to use signs and goods identical to the trademark of another without their consent, may be regarded as doing the same act, and possibly liable.

Although the Philippines does not have any jurisprudence on the issue raised in Louboutin vs. Amazon, it gives us a peek into the potential liability of online marketplaces and the remedies of trademark owners against infringement.

It is noteworthy that a number of e-commerce platforms in the Philippines have signed a Memorandum of Understanding with a number of trademark and copyright owners (Right Owners), establishing a Code of Practice, such as notice and takedown procedures for accessibility and ease on the Right Owners to report the sale of counterfeit and pirated goods to e-commerce platforms. More importantly, e-commerce platforms have committed to employ measures to prevent counterfeit and pirated goods from being sold through their website and ensure the identity of the seller and their contact information, in addition to enforcing the rights of its owners in the contract between the e-commerce platform and seller.

Right Owners under the Memorandum take an active role in the prevention of infringement by monitoring advertisements or posts on the e-commerce platforms, and helping these platforms by giving information on goods that are susceptible to infringement and a list of words commonly used to sell counterfeit goods. In addition, and in cooperation with the e-commerce platform, the Right Owners also commit to assess and give feedback on the platform’s policies on repeated violators.

Consumers also play a pivotal role under the Memorandum in the fight against intellectual property violation online as e-commerce platforms now allow consumers to report counterfeit or pirated goods.

Although the Memorandum is not binding, it is a positive step in the right direction for both e-commerce platforms and Right Owners in preventing infringement and enforcing intellectual property rights online. It is hoped that in future, even Right Owners who are not signatories to the Memorandum can enforce their rights on these platforms.

This article is only for general informational and educational purposes and is not offered as and does not constitute legal advice or opinion.

Phoebe Mae U. Reyes is an Associate of the Intellectual Property Department of the Angara Abello Concepcion Regala & Cruz Law Offices (ACCRALAW).

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