With a recent decision issued in the proceedings C-567/18, the EU Court of Justice, ruling on the interpretation of Article 9 of EU Regulation 2009/209 and Article 9 of EU Regulation 2017/1001 on EU trademarks, held that a subject who, on behalf of a third-party, stores products infringing another’s trademark does not in turn infringe that trademark, unless such products are stored for the purposes of being commercialised by the same warehouse-owner, or the latter is aware of the trademark infringement.

The case arose from the dispute between the company Coty Germany GmbH, distributor of perfumes and licensee of the well-known trademark ‘DavidOff’, and two companies from the Amazon corporate group (i.e. Amazon Service Europe and Amazon FC Graben), regarding the sale through “Amazon Marketplace” of DavidOff branded products unlawfully put on the EU market. Amazon Marketplace, in fact, is a service by means of which Amazon Service Europe enables third-party sellers to place products for sale on the Amazon website. In addition to this service, Amazon FC Graben offers the same third-party sellers a related storage service for such products, which are then dispatched by external companies. In case of purchase, the contract is concluded directly between the third-party seller and the customer.

In 2014, Coty had made test purchases from Amazon.de of a DavidOff brand perfume and had found that the bottles thereby offered for sale via Amazon Marketplace by a certain third-party seller had been put on the market without the consent of the trademark owner and, therefore, were unlawfully offered for sale. Consequently, Coty had brought an action before the German Court in order to have the two abovementioned Amazon companies enjoined from stocking and dispatching in Germany DavidOff brand perfumes which had been put on the EU market without the necessary owner’s consent. However, the request had been dismissed by the Judges of both the first and the second instance, on the assumption that Amazon had neither stocked nor dispatched the products, but rather stored them in its warehouses on behalf of the third-party seller. In other words, according to the German Judges, Amazon was not playing an active role in the commercialisation of the products offered by third-party sellers through the Marketplace: in fact, contracts were concluded directly between the customer and the third-party seller, whilst Amazon merely provided an online showcase and a storage service.

However, following the appeal filed by Coty before the German Supreme Court, the latter had raised a preliminary question relating to the interpretation of Article 9 of EU Regulation 2009/207 (now repealed, but applicable ratione temporis to the case) and Article 9 of EU Regulation 2017/1001 (which replaced the repealed provision and took up its content). These provisions, in fact, provide a non-exhaustive list of the uses which may be prohibited to third-parties by the owner of a trademark. These uses include, in particular: offering for sale products bearing another’s trademark; putting them on the market; stocking products bearing this trademark aimed at offering/putting them on the market. Therefore, the German Supreme Court asked the EU Court of Justice to clarify whether these provisions should be interpreted as meaning that a subject who, on behalf of a third party, stores goods which infringe trademark rights, without having knowledge of that infringement, performs a “storage” of those goods for the purposes of offering them or putting them on the market (unlawful under Article 9), even if it is actually the third-party that intends to offer the goods or put them on the market.

In order to answer the question, the Court of Justice had to determine whether the storage activity carried out by Amazon could be regarded as an unlawful “use” of another’s  trademark pursuant to the mentioned Article 9, in particular in terms of “stocking” aimed at offering/putting on the market the products stored in the company’s warehouses. In this respect, the Court firstly pointed out the lack of a definition for the “use” of another’s trademark in the two EU Regulations and, secondly, recalled some earlier decisions of the same Court according to which the “use” of another’s trademark can be deemed unlawful if, at the very least, the sign is exploited in the context of the user’s commercial communication. In this sense, for example, the Court had in the past held that the infringement of a third party’s trademark, occurring in the context of sales offers published on an e-commerce platform, was directly attributable to the sellers who used that platform, and not to the operator of the marketplace[1]. Likewise, the same Court had held that a subject who provides third-parties with a storage service of goods bearing another’s trademark does not necessarily make “use” of that trademark pursuant to the previously mentioned Article 9[2].

On these basis, the Court of Justice stated that the storage of products bearing another’s trademark can be qualified as “use” of that sign only if the subject performing such storage personally pursues the purposes provided for by the aforementioned Article 9, i.e. offering the products or putting them on the market. However, since in the present case Amazon had clearly not played an active role in the commercialisation of the products stored on behalf of third-party sellers (nor was there any intention in this sense), and the offering/putting on the market were exclusively attributable to these third-party sellers, the Court of Justice concluded that the activity of “mere storage” carried out by Amazon could not be considered as “stocking” under the meaning of Article 9 (basically ruling out that such an activity could constitute an unlawful “use” by Amazon of the DavidOff trademark).

Therefore, the Court of Justice stated that Article 9(2)(b) of Regulation no. 2009/207 and Article 9(3)(b) of Regulation no. 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”. However, the Judge pointed out that this principle does not prejudice the possibility of considering that Amazon infringes the DavidOff trademark in connection with bottles of perfume stocked on its own behalf or which, failing the possibility to identify the third-party seller, would be offered or put on the market directly by Amazon itself.

[1] Decision of 12/7/2011, case C‑324/09
[2] Decision of 16/7/2015, case C‑379/14