Sale of fake Louboutin shoes on Amazon is not trademark infringing, opinion says

“After Brexit, neither the CJEU’s opinion nor decision – when we have it – is binding on the UK. Interestingly, however, some early divergences between the UK and the EU on the issue of liability of online marketplaces and websites for trademark infringement,” said trademark expert Gill Dennis of Pinsent Masons.

“Although both decisions focused on the ‘use’ of the mark, the Advocate General wondered whether a link would be established between the Louboutin mark and Amazon itself in the minds of Internet users”, a Dennis said.

“The Court of Appeal, however, applied a slightly different test, assessing whether the presentation of the offer of goods in this case would make consumers understand that the goods were available to them in the UK.

Dennis said the differing opinions showed the UK could be an easier jurisdiction than the EU in which brand owners could fight counterfeiting.

“It can be said that the Court of Appeal has set a slightly lower bar for the primary liability of platform users. Given the heightened threat of primary liability in the UK, platforms are likely to respond more easily to takedown requests. Brand owners will welcome this, not least because it relieves them of the burden of establishing the identity of the people behind online counterfeit operations in order to take enforcement action against them,” Dennis said.

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