Iceland case – Louboutin and Amazon

ICELAND CASE 

First blog post of the year!

As we reported back in September, the Oral Hearing for cases R1613/2019-G and R 1238/2019-G, Iceland, took place before the EUIPO’s Grand Board of Appeal. 

In those proceedings, the Icelandic Ministry for Foreign Affairs, challenged the registration of the EUTMs “Iceland” (both the word mark and the figurative mark), by filing a request for a declaration of invalidity against the above-mentioned EUTMs “Iceland”, for all the goods and services covered by the registration. 

The Cancellation Division of the EUIPO, upheld Iceland’s request and declared the EUTMs invalid for all the goods and services, on the basis of article 7.1.c) of the European Union Trade Mark Regulation (EUTMR). A subsequent appeal was lodged by the owner of those EUTMs, the British company Iceland Foods Ltd, before the Grand Board, which led to the oral hearing. 

A few days before Christmas, the Grand Board issued its ruling and confirmed the decisions of the Cancellation Division. 

The Grand Board held that “Iceland” is the name of a member state of the European Economic Area, which means that has strong economic and historical links to the European Union. 

As a consequence, the Grand Board considered that both EUTMs had been registered contrary to the provisions of article 7.1.c) EUTMR, as the relevant public could perceive that the goods and services were produced in Iceland. 

LOUBOUTIN – AMAZON CASE 

Last December, the Court of Justice of the European Union (CJEU) issued a decision regarding the Louboutin – Amazon cases. 

Christian Louboutin 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 advertise and commercialise their products. 

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

The Luxembourg Court and the Brussels Court, referred this case to the CJEU for a preliminary ruling, seeking for some guidance on whether Amazon could be held liable for trade mark infringement when displaying advertisement of the counterfeit shoes. 

The CJEU concluded that Amazon could be held liable for alleged trade mark infringement, as the relevant public could perceive from the advertisement that the product was being marketed by Amazon rather than by the third party. 

Now that the CJEU has issued its ruling, it is up to both national courts to decide whether or not Amazon is liable for trade mark infringement.