The EU Court of Justice ruled on 2 April 2020 that by storing, goods on behalf of a third-party seller without being aware of the fact that these goods infringe trade mark rights, a company does not itself use these trade marks and so does not infringe the related rights. Coty Germany, a distributor of perfumes and licensee of the EU trade mark Davidoff, sued the online platform Amazon before the German Courts for storing and dispatching infringing bottles of Davidoff perfume on behalf of third party sellers on the Amazon marketplace.
The German Federal Court referred the following question to the Court of Justice: “Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for
the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market”. Under Article 9, 3 (b) of EU Trademark Regulation 2017/1001 (“EUTMR”), stocking goods under an infringing trade mark for the purpose of offering them or putting them on the market may be considered as an infringing use.
The Court of Justice ruled on the basis of the facts as presented by the referring court. Therefore, the premises where that Amazon merely stored the goods, without itself offering them for sale or putting them on the market and without having the intention to do so. The question therefore was whether this act of storing goods could be considered as “stocking goods for the purpose of offering them or putting them on the market” within the meaning of Article 9, 3 (b) EUTMR.
The Court then referred to its previous case law where it held that the notion of “use” of a trade mark involves active behaviour and direct or indirect control of the act constituting the use. For example, as regards e-commerce platforms, the Court ruled that the use of trade marks in offers for sale displayed in an online marketplace is made by the sellers on that marketplace and not by the platform operator itself (see L’Oréal and Others, C-324/09).
With respect to Article 9, 3 (b) EUTMR, the Court noted that it follows from its wording that in order for the storage of goods to be classified as ‘using’ the trademarks they bear, it is necessary for the storage provider itself to pursue the aim of offering the goods or putting them on the market. As the referring court unequivocally stated that Amazon did not itself offer the goods concerned for sale or put them on the market, the Court concluded that there was no infringing use of the trade mark by Amazon.
Interestingly, in the course of the proceedings, Coty Germany asked the Court of Justice, in the event that the answer to the question submitted would be in the negative, to rule on whether the storage activity of Amazon falls within the scope of the safe harbour provisions of the E-commerce Directive 2000/31 and, if not, whether Amazon must be regarded as an ‘infringer’ as referred to in Article 11 of the IPR Enforcement Directive 2004/48. The Court, however, stated that the referring court did not raise that question, and that there is therefore no need to answer it. The Court merely observed that it is apparent from settled case-law that, where an economic operator has enabled another operator to make use of a trade mark, its role must, as necessary, be examined from the point of view of rules of law other than Article 9 of Regulation 2017/1001, such as Article 14(1) of the E-commerce Directive or Article 11 of the IPR Enforcement Directive.
By limiting its analysis in this case to the question and facts as referred by the German court, the Court missed out on an opportunity for further clarification. This is particularly so since Amazon, as follows from Advocate General Campos Sánchez-Bordona’s analysis in his Opinion, also offers a specific programme (“Amazon Logistics”) which involves a much broader range of activities than mere storage. These activities include preparing the goods for shipment (e.g. by labelling them, adequately wrapping them or wrapping them in gift wrapping) and shipping them to the buyer, as well as taking care of the advertisements, managing the customer support service, receiving payment from the buyer of the goods, etc. For the Advocate General, these activities cannot be considered as a mere storage service and result in an active involvement by Amazon.
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