AMAZON MARKETPLACE AND TRADE MARK INFRINGEMENT: RECENT RULING OF THE COURT OF JUSTICE OF THE EUROPEAN UNION
By its decision of 2 April 2020, the Court of Justice of the European Union ruled in the case of Coty Germany GmbH (“Coty”) against certain companies of the Amazon group (C-567/18), holding that the mere storage by Amazon, within its online marketplace (“Amazon-Marketplace”), of products infringing trademark rights does not in itself render Amazon liable for the infringement of those rights.
The decision is based on a reference for a preliminary ruling from the German Federal Court of Justice in a trademark law case brought by the distributor Coty against certain companies in the Amazon group. Coty, licensee of the European Union trademark “Davidoff” protected for “perfumery, essential oils, cosmetics”, complained that two companies of the Amazon group had infringed their right to prohibit third parties from using that sign.
Coty had in fact carried out a test purchase of some bottles of the “Davidoff” brand perfume offered for sale by a third party seller (therefore not directly by Amazon) on the Amazon Market Place. This seller was a member of the “Amazon Logistics” program, under which products sold by third parties are stored and shipped by Amazon on their behalf.
The first two proceedings
Coty, claiming that his rights to the “Davidoff” trademark were not exhausted because the products in question had been placed on the European Union market without his consent, sent a warning to the seller.
Subsequently, Coty invited Amazon to put back all the bottles of perfume bearing the trademark in question and stored on behalf of the seller. Amazon sent the requested perfume bottles to Coty. However, it appeared that among these bottles were some from a different vendor’s stock, which Amazon was unable to identify. Taking the view that Amazon’s conduct violated its rights to the trademark operated, Coty asked the German judge (Landgeright) to prohibit Amazon from stocking – or having stocked or dispatched – in Germany perfumes bearing the trademark in question, marketed in the European Union without Coty’s consent.
The Landgericht rejected the action proposed by Coty. Coty was also unsuccessful in second instance, considering that the court of appeal held that the two companies in the Amazon group had neither stored nor dispatched the products in question and that they had merely stored those products on behalf of the seller and other third-party sellers. Claiming that Amazon’s conduct violated its trademark rights, Coty asked the German Judge (Landgeright) to prohibit Amazon from stocking or shipping – or having stocked or shipped – to Germany perfumes bearing the trademark in question, marketed in the European Union without Coty’s consent. The Landgericht rejected the action proposed by Coty. Coty was also unsuccessful in second instance, taking the view of the appellate court that the two companies in the Amazon group had neither stored nor dispatched the products in question and that they had merely stored those products on behalf of the seller and other third-party sellers.
The reference for a preliminary ruling
Coty brought an appeal for cassation before the referring court. The latter, the Bundesgerichtshof (Federal Court of Justice, Germany), considered it necessary to ask the Court of Justice to interpret Article 9(2)(b) of Regulation (EC) No 207/2009 on the European Union trademark, as amended by Regulation (EU) 2015/2424 and Article 9(3)(b) of Regulation (EU) 2017/1001. That reference for a preliminary ruling was necessary in order to understand whether those provisions must be interpreted as meaning that a person who stores on behalf of a third party goods infringing a trademark right, and who is not aware of the infringement of the trademark right, stores those goods with a view to their offer or placing on the market in accordance with those provisions, even where it is only the third party who offers those goods or places them on the market.
The decision of the Court of Justice of the European Union
The Court of Justice of the European Union has firstly referred to the legislation applicable to the EU trademark, pointing out that it confers, inter alia, on its proprietor the exclusive right to prohibit any third party, without his consent, from using in the course of trade, in relation to goods or services, any sign, where the sign is identical to the EU trademark and is used in relation to goods and services which are identical to the goods or services for which the EU trademark is registered. In particular, the Luxembourg courts have pointed out that the different ‘uses’ which the proprietor of the trademark is entitled to prohibit include – under the abovementioned legislation – the offering of goods, their placing on the market or their storage for those purposes.
In the present case, the Court of Justice of the European Union held that the storage operation carried out by Amazon did not fall within the concept of “use” mentioned above. According to the Court of Justice of the European Union, therefore, in order for the storage by an economic operator of goods bearing signs identical or similar to trademarks to qualify as “use” of such signs, it is necessary for the person carrying out the storage to pursue personally the purpose of offering the goods or placing them on the market. Otherwise, mere storage by such an operator cannot be regarded as use of the trademark. In that case, the operator merely creates the technical conditions necessary for the use of that sign.
In the light of that interpretation of the rules referred to above, the Court of Justice of the European Union, having found that in the present case Amazon had limited itself to merely storing the goods covered by the trademark applied for, without offering them for sale or putting them on the market itself, held that it had not made use of the trademark liable to be prohibited by the proprietor.