Marketplaces - can the mere storage of infringing goods be considered as a trademark infringement ?
The company Coty Germany GmBH distributes, as a licensee, perfumes under the European Union trademark DAVIDOF. A third party was selling infringing products under that trademark on Amazon's platform. Moreover, that seller had also subscribed to the "Shipped by Amazon" program, under which the products are stocked by companies of the Amazon group, in this case Amazon FC Graben.
CJEU, 2 April 2020, C-567/18, Coty Germany GmBH v. Amazon Services Europe SARL
Coty then sued Amazon Services Europe and Amazon FC Graben for infringement of its trademark, in particular for possession of the infringing products. Following proceedings which gave rise to several decisions, the German Federal Court of Justice decided to refer the following question to the European Union Court of Justice (EUCJ) for a preliminary ruling: "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?"
Placing itself on the ground of Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001, the EUCJ negatively answers.
Indeed, the EUCJ seeks to determine "whether such a storage operation may be regarded as 'using' of the trade mark (...) and in particular whether it may be considered as 'stocking ' those goods in order to offer them or put them on the market".
It results from its analysis that even if a marketplace creates the technical conditions necessary for the use of the sign and is being paid for that service, this does not mean that the party offering the service is itself uses that sign, since he does not have any control over the act constituting the use of the mark.
Second, it follows 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 the offering of goods or putting them on the market.
However, based on the facts as established by the national court, the EUCJ notes that the Amazon group did not itself offer the goods concerned for sale and or put them on the market. Only the seller pursued that objective.
Consequently, it considers that cannot be held liable, the person who, on behalf of a third party, stores goods which infringe trade mark rights, without being aware of that infringement, and without the view of offering them or putting them on the market.
LAVOIX’s opinion : Although this decision is not satisfactory for trademark owners, the fact that they cannot directly act in infringement proceedings against the operator of a marketplace and a warehousing and delivery company remains consistent with previous case law, as these parties do not have any control over the acts constituting the use of the trademark.
Nevertheless, it is worth of note that following COTY's letter of formal notice, the seller has stopped selling and distributing the infringing products.
In order to tackle effectively counterfeiting, LAVOIX offers to set up a web monitoring service to identify counterfeiting products present on the main marketplaces and to have them removed as soon as possible.
The LAVOIX teams are at your disposal to assist you in this process and provide you with a strategy adapted to your needs.
Link of the decision in English, click here.