· An article by Dr. Norman Dauskardt

Amazon is both an opportunity and a risk for brand owners. While the platform offers enormous reach, many companies face pressure from third-party sellers: fake or misleading offers that look deceptively similar to their own products appear again and again.

The likelihood of confusion frequently leads not only to reputational damage, but often also constitutes a trademark infringement. The situation becomes particularly critical when suppliers from abroad are involved – difficult to reach, but nonetheless damaging to business. The key question is: when is Amazon itself legally responsible?

1. Typical forms of trademark infringement on Amazon

Trademark violations on Amazon occur daily. The following situations are particularly common:

  • Product counterfeits: third-party sellers offer imitations with an identical or similar brand name. Customers often then choose the cheaper option, which threatens loss of revenue for the genuine product, may cause reputational damage and ultimately confuses the customer.
  • Misuse of existing listings: third-party sellers attach themselves to a genuine branded listing. This is possible because Amazon allows multiple traders to sell under the shared product page (ASIN). The consequence is not only that a third-party seller distributes a different, possibly lower-quality product under your brand, but also that your own product loses value and credibility. Because if there are negative reviews, they damage your brand image.
  • Illegal use of brand names: protected trademarks are used without permission in product titles or descriptions. This not only often constitutes a clear trademark violation, but also creates the impression that the other product is connected to your brand.
  • Problematic Amazon suggestions: even automatic recommendations can contain unlawful content. Where product recommendations or search results include incorrect brand attributions, this can lead to trademark infringement.

2. When is Amazon liable as a company?

But when is Amazon liable for these scenarios? The Amazon platform appears in two roles:

Amazon's liability as a direct seller

Amazon acts as a direct seller where it sells a product directly. This is in particular the case where the product is offered with the addition "Sold by Amazon" or where a sale of an Amazon own-brand product is involved. In such a case the platform is fully liable. This is demonstrated by the red sole case: in the ECJ judgment of 22 December 2022 (C-148/21 and C-184/21) Amazon was held responsible in the so-called Louboutin case. It concerned the sale of shoes with a characteristic red sole – a registered trademark of Louboutin – by third-party sellers via the Amazon platform. Although Amazon had not sold the products itself, the ECJ held: Amazon is directly liable. The reason was that users could not clearly recognise that the products came from third parties. According to the ECJ, this is the case when Amazon presents its own products and third-party offers uniformly and displays its own logo. The presentation of the offers creates the impression for consumers that they come from Amazon itself. It is precisely this circumstance that gives rise to direct legal responsibility.

Amazon's liability as a platform operator

Amazon is also liable for its role as a platform. When third parties sell products via Amazon, Amazon as a platform is in principle only an intermediary. However: if Amazon is aware of the violation and does nothing, the company can be held liable. This is also referred to as so-called secondary liability (Störerhaftung). An example of this are plant-based products such as "soy milk" or "oat milk" offered by third-party sellers on Amazon. Although they are purely plant-based, they may not be called "milk" under EU law (Art. 78 para. 2 Regulation (EU) No 1308/2013). If Amazon is notified of such violations, the company must not only react but also independently prevent similar legal violations in the future, the Higher Regional Court of Frankfurt decided on 21 December 2023 (Case ref. 6 U 154/22). Amazon therefore also bears liability as a marketplace operator.

3. Amazon and the Digital Services Act (DSA)

Since August 2023, the DSA has applied to large online platforms such as Amazon. The DSA obliges platforms to provide greater transparency and response to unlawful content.

Amazon must therefore:

  • Provide reporting mechanisms for illegal content (Art. 16 DSA): Amazon must offer a system through which users and rights holders can quickly and easily report unlawful content. The reporting options must be accessible, comprehensible and user-friendly. This provision is intended to ensure that affected parties can report legal violations quickly and easily.
  • Respond quickly to notices (Art. 17 DSA): Once Amazon has been notified of a legal violation, the company must promptly review the incident and – if the notice is justified – remove or block the affected content. This provision requires the platform to respond and review the matter quickly.
  • Publish transparency reports (Art. 42 DSA): Amazon must regularly inform the public and the competent authorities how many items of content were reported and removed and what measures were taken against illegal content.

And for breaches of duty?

In the event of a breach by Amazon of the obligations of the Digital Services Act (DSA), the EU Commission can impose measures in the form of sanctions (Art. 52 DSA).

4. Recent case law – how have courts ruled on trademark infringement by Amazon?

In addition to the Louboutin case (ECJ, 22.12.2022, C-148/21 and C-184/21) and the soy product case (OLG Frankfurt am Main, judgment of 21.12.2023, ref. 6 U 154/22), there are further decisions in which Amazon has been held responsible:

  • BGH judgment of 25 July 2019 (I ZR 29/18 – Ortlieb II): In this case, Amazon placed Google Ads in which protected brand names such as "Ortlieb" were used, without the advertised products coming from the brand owner. The Federal Court of Justice held that Amazon is liable for such misleading advertisements and prohibited the use of brand names in Google Ads without the brand owner's consent.
  • LG München I, judgment of 20 February 2019 (37 O 5140/18): A third-party seller used product photos of a manufacturer of sports and leisure backpacks on Amazon without permission. The court held that Amazon is liable for the copyright infringement since the platform also used the photos for its own offers. Amazon was ordered to cease use and pay damages.

5. What can you do as a brand owner?

  • Amazon Brand Registry: if your trademark is officially registered, you can enrol it with Amazon. This can facilitate the enforcement of your rights, for example through preferential review of complaints.
  • Report trademark violations: through a "Notice & Takedown" procedure offered by Amazon, action can be taken against individual listings.
  • Secure evidence: document every legal violation thoroughly. Records such as screenshots, correspondence, listing URLs and sales figures can be decisive in the event of a dispute.
  • Achieve a sales block: notify Amazon in order to have the unlawful listing blocked. An attorney can help notify Amazon of the trademark infringement in a legally sound manner and enforce the blocking of the listing.
  • Issue a cease-and-desist letter against Amazon: a cease-and-desist letter against third parties or Amazon itself can be an effective means of stopping the legal violation. Involving a specialist attorney can be helpful to avoid formal errors and proceed in a legally secure manner.
  • Preliminary injunction: a preliminary injunction can ensure swift judicial protection in acute cases (deadline: typically 1 month from knowledge). Here too it is often sensible to seek legal advice in order to make optimal use of the prospects of success.

6. Conclusion: Amazon can be liable for trademark violations

Through the DSA and clear case law, it is established: Amazon can be held liable. Not only as a direct actor, but also as a platform, Amazon can be responsible for trademark infringements. This gives brand owners new legal options against the platform and contributes to effective protection of their own trademark rights.

As experienced attorneys in intellectual property law, we know how crucial the protection of a trademark is to the commercial success of a company. In particular on large online platforms such as Amazon, it is important to enforce this protection and your rights.

Should you or your company be affected, for example because:

  • your trademark is being infringed on Amazon,
  • another trader is distributing an inferior product under your ASIN,
  • your protected brand name is being used in product titles, descriptions, listings or advertisements without your consent, or
  • you generally have the impression that your trademark rights are being infringed on or through Amazon,

we are happy to review your legal options. Where a trademark infringement exists, we support you swiftly and specifically: with cease-and-desist letters, injunction demands and judicial enforcement of your rights.

Naturally, we also act for the other side:

If you are accused of trademark infringement, we carefully review the claims and defend you resolutely, for example against excessive cease-and-desist letters or attempts to unlawfully exclude you from competition.

Please feel free to contact our specialist attorneys for trademark law and platform liability directly. We are happy to offer you a no-obligation and free initial consultation about your matter and advise you and your company in Berlin, nationwide and across Europe.

Call us now on 030 36 41 41 90, write to us at kontakt@abd-partner.de or use our contact form directly!