2020/05 > The mere storage by a warehouse-keeper of goods which infringe trade mark rights does not constitute trade mark use
In a much-awaited preliminary decision, the Court of Justice of the European Union (CJEU) ruled on April 2 on the responsibility of AMAZON warehouse-keepers for the sale by a third party seller on the online marketplace, Amazon-Marketplace, of perfume bottles for which the rights had not been exhausted.
In 2014, COTY GERMANY (hereinafter COTY), a German company holder of a license on the DAVIDOFF trademark n° 876 874, discovered through a test purchase that the perfume “Davidoff Hot Water EdT 60 ml” was offered for sale by a reseller “”on Amazon-Marketplace” of the website www.amazon.de”. Amazon Marketplace thus enables third-party sellers to avail themselves of the “Fulfilment by Amazon” scheme. The products are stored there by companies of the Amazon group of companies and are shipped by external service providers.
COTY had filed an action for infringement against different companies of the AMAZON Group before the Landgericht (German Regional Court). The Landgericht first, and then the Court of Appeal, rejected the action brought by COTY against the warehouse-keeper AMAZON FC GRABEN on the grounds that the latter had kept the products on behalf third party sellers.
COTY then brought an appeal on a point of law before the referring court. The Bundesgerichtshof (Federal Court of Justice, Germany) decided to refer a question for a preliminary ruling on the interpretation “of Article 9.2(b) of Regulation (EC) No 207/2009 of 26 February 2009, in the version prior to its amendment by Regulation (EU) 2015/2424 of 16 December 2015, and of Article 9.3(b) of Regulation (EU) 2017/1001 of 14 June 2017.”
Therefore can a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, be regarded as holding those goods for the purpose of offering them or placing them on the market if it is not that person but the third party who, alone, pursues the aim of offering the goods for sale or putting them on the market ?
On the storage operation and the concept of “using”: a question of purpose
The Court first points out that neither Regulation n° 207/2009 nor Regulation n°2017/1001 in their articles 9 define the concept of “using” but it has already had occasion to clarify it in different judgments (paragraphs 36 to 44).
According to the Court, the concept of “using” according to its “”ordinary meaning” implies active behavior and direct or indirect control of the act constituting the use (paragraph 37). ”
The Court adds that, “in order for the storage of goods bearing signs identical, or similar to, trade marks to be classified as “using” those signs, it is also necessary “(….) for the economic operator providing the storage itself to pursue the aim referred to by those provisions, which is offering the goods or putting them on the market.”
In this particular case, only the third-party seller, beneficiary of the online marketplace, offers the goods or puts them on the market. In order to establish use of the trade mark, the warehouse-keeper would have had to himself pursue the aim of offering the goods for sale or putting them on the market.
The Court hereby rules: “Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark and Article 9(3)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark must be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not itself pursue those aims.”
Thus the mere storage of goods by AMAZON on behalf of a third-party seller does not constitute an infringement. AMAZON as warehouse-keeper does not hold these products for the purpose of offering the goods for sale or putting them on the market itself.
However, the CJEU, in its press release, states “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.”