| A company that stores goods for a third-party seller without knowledge of the trademark infringement does not use the trademark itself if, like the seller, it does not pursue the objective of offering the goods for sale or placing them on the market. |
The German company Coty Germany, which sells perfumes, holds a license to the European Union trademark Davidoff. It accuses two Amazon Group companies of having infringed this trademark by storing and shipping bottles of the perfume „Davidoff Hot Water“ offered for sale by third-party sellers on the Amazon marketplace (www.amazon.de), although these bottles were placed on the Union market without its consent. Coty Germany has sued the two Amazon companies in the German courts for injunctive relief. |
The Federal Court of Justice (Germany) is asking the Court of Justice to interpret the provisions on the EU trade mark. It wants to know whether a company that stores infringing goods for a third-party supplier without being aware of the trademark infringement is itself using that trademark. |
In today’s judgment, the Court answers that an undertaking which stores the goods only infringes the trade mark if, like the seller, it pursues the purpose of offering the goods for sale or putting them on the market. |
In the present case, the Federal Court of Justice unequivocally pointed out that the two Amazon companies in question had neither offered the goods for sale nor put them on the market themselves, but that the third party alone had pursued this objective. Consequently, the Amazon companies did not use the Davidoff trademark themselves. |
However, the Court points out that other provisions of EU law, in particular those on electronic commerce and the enforcement of intellectual property rights, allow legal action against an intermediary who has enabled an economic operator to use a trademark unlawfully (judgment of the CJEU of 02.04.2020, Ref.: C 567/18; source: CJEU press release no. 39/2020 of 02.04.2020; PDF). |