Online Intermediaries and Trademark Owners: The Legal Position and Obligations of Online Intermediaries to Trademark Owners Prior and post-Louboutin v Amazon

Abstract

This article argues that the legal standing of the online intermediary towards trademark holders has undergone a significant shift. Generally, only secondary liability was assumed, as the online intermediary was not held to be able to bear its own “primary” liability for conduct not directly attributable to itself, such as offering counterfeit products. However, in the Louboutin v. Amazon case, the CJEU provided a new standard for interpreting “commercial communication”, which is required for an “active role” in the infringing use. According to the CJEU, this should include the perspective of the informed and reasonably observant internet user. This reasoning is remarkable, as this perspective has not previously been considered when assessing whether there is active behaviour. The combination of the Louboutin v. Amazon judgement and the advent of the DSA with its associated new obligations mean that not only has the responsibility of online platforms increased, but they may also be held directly liable for infringing goods offered on their platform.