The Court of Justice of the European Union has ruled in the case of Coty Germany GmbH v Amazon Services Europe Sàrl, Amazon Europe Core Sàrl, Amazon FC Graben GmbH and Amazon EU Sàrl (Case C-567/18). It said that Article 9(2)(b) of Regulation (EC) 207/2009 and Article 9(3)(b) of Regulation (EU) 2017/1001 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.
The German company Coty Germany, a distributor of perfumes, holds a licence for the EU trade mark Davidoff. It claimed 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 requested that the German courts order the two Amazon companies concerned to desist from such storage and dispatch.
The German appeal court asked the Court of Justice to interpret the EU trademark regulation (207/2009).
It sought 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 stocking those goods for the purposes of offering them or putting them on the market.
The Court has ruled that 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 this case the German court had stated unequivocally that the two Amazon companies concerned had not themselves offered the goods for sale or put them on the market and that the third-party seller alone pursued that aim. It followed that the Amazon companies had not themselves used the Davidoff mark.
However, the CJEU noted that other provisions of EU law, in particular those on e-commerce (Directive 2000/31/EC) and enforcement of intellectual property rights (Directive 2004/48/EC) allow legal proceedings to be brought against an intermediary who has enabled an economic operator to use a trade mark unlawfully.
