Deichmann vs Munich case. The Opinion of the Advocate General in Louboutin-Amazon case

DEICHMANN vs MUNICH

Munich S.L., the Spanish shoes manufacturer, registered  in 2002 a figurative mark as a European Union trade mark (EUTM) for goods and services in Class 25, for sports footwear. The trade mark at stake was represented by a cross on the side of the shoe.

Deichmann SE filed before the EUIPO, an application for declaration of invalidity of the above-mentioned trade mark. 

The Cancellation Division of the EUIPO rejected the invalidity request, hence the German company appealed to the Boards of Appeal of the EUIPO (BoA), which upheld the decision of the Cancellation division and dismissed the appeal on the grounds that Munich succeeded in demonstrating that their sign was sufficiently distinctive. 

Deichmann lodged an appeal against the BoA’s decision before the General Court (GC). 

The German company claimed that the BoA did not properly assess the distinctive character of the sign, considering that it was devoid of any distinctive character, thus registration as an EUTM could not be granted. 

Note that an EUTM can be declared invalid if it was registered despite the existence of one absolute ground for refusal. For instance, if the sign lacked of distinctive character, pursuant to article 7(1)b of the Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark.

Therefore, it is sufficient to state the existence of the distinctive character in order to avoid an invalidity claim. 

The GC stated that Munich was able to demonstrate through the evidences submitted that even simple patterns placed on the side can indicate the commercial origin the shoes. The evidences submitted by Deichmann reinforced this position. 

Moreover, the GC ruled that the BoA correctly stated that the average consumer would perceive the inherent distinctiveness of the pattern. In addition to this, the sign itself placed on the side of the shoe is capable of fulfilling one of the trade mark functions: to distinguish the commercial origin of the shoes, from one company to another.

Consequently, there were enough factors for the Court to consider the existence of distinctive character and therefore to reject the invalidity request. Hence, the Court dismissed the appeal and confirmed the BoA’s decision. 

OPINION OF THE ADVOCATE GENERAL IN LOUBOUTIN-AMAZON CASE

The Opinion of the Advocate General of the Court of Justice of the European Union (CJEU), waived the e-commerce platform Amazon from liability as regards sales of counterfeit Louboutin shoes. 

As our readers might know, Louboutin’s shoes are well-known for their red-soled high heels. For instance, the red sole is registered as a trade mark. 

From its side, Amazon is an e-commerce platform and a marketplace operator that advertises and sells its own products, but also third parties are able to advertise and commercialise their products. 

In this case, Louboutin took legal actions against Amazon in Belgium and Luxembourg, alleging that the e-commerce platform was regularly advertising red-soled shoes that were not authorised by Louboutin. On top of that, the luxury shoes brand claimed that Amazon was using a sign that was identical to their trade mark and for the same goods and services. 

In this recent opinion, the Advocate General Szpunar, confirmed that although Amazon was commercialising the products, it was acting as an intermediary, thus it could not be held directly liable for trade mark infringements committed by third parties on its platform. 

Moreover, the Advocate General stated that Amazon could only be held directly liable for using "a sign identical to a trade mark", whereas in this case, the advertisements always specified whether the goods were marketed by third-party sellers or directly by the platform.

The Court of Justice will have to issue a ruling on this case, and even if the opinion of to the General Advocate is not binding, they are generally in line with the rulings.