The Court of Justice of the EU issued a judgement that an entity which exclusively stores for a third party goods infringing a trade mark without being aware of the infringement does not infringe the protected trade mark.  

Judgment of 2 April 2020, Case C-567/18

In the present case, the CJEU had to answer a question whether an entity which stores for a third party goods infringing a trade mark without being aware of the infringement must be regarded as a warehouse-keeper of those goods with a view to offering them or putting them on the market within the meaning of the provisions on trade mark infringement if that entity does not pursue those objectives personally.

The proceedings took place between Coty Germany GmbH (“Coty”, “Claimant”) and 4 companies belonging to the same group, i.e. Amazon Services Europe Sàrl, Amazon Europe Core Sàrl, Amazon FC Graben GmbH and Amazon EU Sàrl (“Amazon”). Amazon offers third party sellers an opportunity to place offers of sale of their goods at www.amazon.de and Amazon FC Graben maintains a warehouse where goods are stored and then dispatched to customers by external service providers. Coty offers perfumes under the trademark DAVIDOFF, among others.

The claimant brought an action against Amazon for trade mark infringement on account of the storage and dispatchment of goods bearing the Davidoff mark, to which rights have not been exhausted. The courts of both instances dismissed the action and the Bundesgerichtshof stayed the proceedings and asked the CJEU about the interpretation of the concept of use within the meaning of Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark (OJ 2009 L 78, p. 1), in the version prior to its amendment by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21), and of 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 (OJ 2017 L 154, p. 1).

Referring to its earlier case-law, the CJEU recalled that, according to the ordinary meaning the term use it requires active behaviour and direct or indirect control of the act constituting the use. It referred to the earlier rulings, from which it resulted, inter alia, that Google’s actions consisting in the AdWords service do not constitute use of the trade marks, such as pouring a beverage into cans on behalf of another entity or making it possible to place advertisements on auction platforms.

Furthermore, according to the CJEU, in order for the storage of goods bearing signs identical with, or similar to, trademarks to qualify as using of those signs, it is 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 the facts of the case at hand, it was found that Amazon did not personally offer or market goods under the mark. This means, according to the CJEU, that he did not use the sign within the meaning of the trademark law. Such a decision, although consistent with the earlier case-law, raises doubts, as it excludes trademark infringements by many entities participating in the production and trade of illegal goods.

However, the CJEU itself does not exclude liability in similar circumstances. With respect to Amazon, the Court submitted that it is not exclude that the defendants may be considered using the trademark in connection with bottles of perfume which they stock not on behalf of third-party sellers but on their own behalf or which, if they were unable to identify the third-party seller, would be offered or put on the market by defendants themselves. Nevertheless, it was bound by the facts established by the national courts that decided that Amazon had not been using the trademarks. Moreover, the CJEU did not exclude Amazon’s liability under other provisions. Thus, the question of liability for trade mark infringement by those involved in the production and trading of goods bearing the infringing marks, but not directly, remains open.