The mere storage by Amazon, in the context of its online marketplace (‘AmazonMarketplace’), of goods which infringe trade mark rights does not constitute an infringement by Amazon of those trade mark rights.

“A company which, on behalf of a third-party seller, stores goods without being aware that they infringe trade mark rights does not itself use that trade mark, so long as it does not pursue, like the seller, the aim of offering the goods for sale or putting them on the market.”

The German company Coty Germany, a distributor of perfumes, holds a licence for the EU trade mark Davidoff. It claims that two Amazon group companies infringed its rights in that mark by storing and dispatching bottles of ‘Davidoff Hot Water’ perfume offered for sale by third-party sellers on Amazon-Marketplace (www.amazon.de) although those bottles were not put on the EU market with its consent. Coty Germany has requested the German courts to order the two Amazon companies concerned to desist from such storage and dispatch.

The Bundesgerichtshof (Federal Court of Justice, Germany) asks the Court of Justice of the European Union to interpret the EU trade mark regulation. It seeks to ascertain whether a company which, on behalf of a third-party seller, stores goods which infringe trade mark rights, without being aware of that infringement, itself uses that mark.

By judgment, the Court of the European Union answers that, in order for there to be an infringement of the rights in the trade mark by the company providing the storage, that company must pursue, like the seller, the aim of offering the goods for sale or putting them on the market.

In the present case, the Bundesgerichtshof has stated unequivocally that the two Amazon companies concerned have not themselves offered the goods for sale or put them on the market and that the third-party seller alone pursued that aim. It follows that the Amazon companies have not themselves used the Davidoff mark.

The Court recalls, however, that other provisions of EU law, in particular those on e-commerce and enforcement of intellectual property rights, allow legal proceedings to be brought against an intermediary who has enabled an economic operator to use a trade mark unlawfully.

Court of Justice of the European Union PRESS RELEASE No 39/20 Luxembourg, 2 April 2020

Source: https://curia.europa.eu/jcms/jcms/p1_2956068/en/