Falsifications of products represent one of the main threats to economic and innovative growth. The increase in the proportion of counterfeit products in global commerce is alarming, and clearly demands coordinated action, on all levels, in order to be tackled entirely. According to the International Chamber of Commerce, falsification and piracy generates an estimated 917,000 million dollars in revenue a year.
With the surge in e-commerce business and the growing preference of consumers for online purchases instead of in-store ones, the situation has only worsened.
It would therefore be prudent for not just Spanish legislation, but also for legislation of the Member States of the European Union, and indeed on a global level, to adapt to this new market reality, in order to react against the use of online e-commerce and product distribution platforms to sell counterfeit products.
The Attorney General of the European Court of Justice (ECJ), Maciej Szpunar, pronounced on this matter last Thursday.
The case in question is in response to legal action brought forward on behalf of the renowned French shoemaker Louboutin against Amazon for advertising products in its webpage that were marketed without the manufacturer´s consent, and with a sign identical to that of the brand itself – specifically, the distinctive and characteristic red sole of their shoes.
The question dealt with whether one could consider Amazon directly responsible for a third party infringing upon the rights of ownership of the trademark holder on Amazon’s platform.
In his pronouncement on the issue last Thursday, the Attorney General of the ECJ highlighted that the North American company “cannot be considered directly responsible for the infractions upon the rights of the trademark owners that occur on its platform as a result of the commercial offers of third parties.”
Szpunar added that “despite the fact that on the e-commerce platform the offers of third-party sellers and Amazon are presented in a uniform way and that they all include the logo of the renowned distributor, Amazon, the product listings always specify if these products are sold through third-party sellers or directly through Amazon.”
According to the Attorney General, liability should only be attributed directly to the operator of an e-commerce platform “when a seller uses a sign identical to the brand”, whereas in the case of Amazon its listings always specify if the products are marketed by third-party sellers or directly by the platform itself.
With regards to this issue, it is worth highlighting that Amazon has spent years fighting against the problem of counterfeit products.
This week, the company published the second edition of its Report on Trademark Protection, in which it emphasised its promise to clients that they can shop on their website with absolute confidence that the products they are browsing are authentic. In said report, Amazon reaffirmed its determination to pursue product falsifications and published a roadmap to halt the distribution of product falsifications through collaboration between the public and private spheres.
For the time being, the ECJ has not pronounced on the issue. Nor is the ECJ expected to reach a decision on the matter in the coming months.
We must remember that the opinions of the Attorney General are non-binding. That said, the Judgements of the ECJ usually do very much bear in mind the Attorney General´s opinion and the resolutions typically follow the same line as these mentioned opinions.
Quite apart from the possible direction which the ECJ´s judgement will follow, there is an evident need for the different legislative bodies of numerous countries in the European Union, and indeed across the globe, to make an effort in providing companies with the tools to tackle this occurrence and mitigate the damages it causes them.
Aleix Cuadrado
Vilá Abogados
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10th of June 2022
