COMPUTER DATA IS A MOVABLE PROPERTY THAT CAN BE SUBJECT TO EMBEZZLEMENT

06/05/2020

This is what was recently stated by the Italian Supreme Court of Cassation, second criminal chamber, with the judgment no. 11959 of April 10, 2020.

 

The background.
The case in question originates from the conduct contested to the defendant, who, before resigning from the company for which he used to work, had returned the company notebook with the formatted hard disk, without traces of the computer data originally present. Some of these data were found copied on the defendant’s personal computer. With the judgement dated June 30, 2017, the Court of Turin condemned the defendant for the crime of computer system damage provided for by Art. 635quater of the Italian Criminal Code. The decision of the judge of first instance was partially overturned by the Court of Appeal of Turin, which with the sentence of June 14, 2018 acquitted the defendant of this crime but at the same time condemned him to the different crime of embezzlement provided for by Art. 646 of the Italian Criminal Code. The defendant applied to the Court of Cassation, asking for his acquittal from the crime of embezzlement on the grounds that such a crime could not occur due to the impossibility of classifying computer data as a “movable property”, which together with money represents a necessary constituent element of the offence in question. The Supreme Court’s judges, departing from the prevailing case law, rejected the defendant’s ground of appeal and affirmed that computer data, due to their characteristics and functions, can be considered as a “movable property” under the criminal law and therefore can integrate those crimes that punish its misappropriation and/or embezzlement.

The previous case law and the meaning of “movable property”.
The argumentative process followed by the Supreme Court starts with the consideration that the Italian criminal law system lacks a positive definition of “movable property”, with the only exception of the provision of paragraph 2 of Art. 624 of the Criminal Code, which with specific reference to the crime of theft compares to the movable property “electricity and any other energy that has an economic value”. The absence of a legal definition therefore makes it necessary to leave to the interpreter the task of attributing to said expression the most appropriate and adequate meaning also in consideration of the social and technological evolution that can be recorded over time.
On that premise, the Court reviewed a number of (even relatively recent) rulings based on the traditional notion of “movable property”. These rulings identify as a necessary structural character of the movable property its intrinsic capacity to be the object of material apprehension, detention, abduction, seizure and appropriation. Character that would be missing when dealing with the so-called “intangible” assets, such as computer data. These assets, not being able to be materially perceived from a sensory point of view, could not be the object of subtraction or (in this case) of appropriation, except in the limited cases in which such conduct concerns the physical supports (e.g. the hard disk) containing computer data and not the computer data itself.

The new interpretation.
According to the judges of the Court, such an approach deserves to be overcome in favour of a more modern and up-to-date reading of the concept of movable property, which takes account of the evolution of the activities which man is capable of carrying out by means of computer equipment. It is, in fact, undeniable that technological and informatics evolution has progressively given rise to several examples of goods and entities which – although not physically apprehensible – are nevertheless endowed with those characteristics of materiality and physicality which allow their movement from one place to another and – consequently – their illegitimate appropriation and subtraction. “Movable property”, therefore, not (any longer) as a good susceptible of physical apprehension but as a good endowed with its own physicality and susceptible of transfer.

The concept of computer data and the Court’s judgement.
In this context, it is clear to the Court that also the file and the computer data must fall within the notion of movable property under criminal law. The file, states the Court, is nothing more than a set of computer data stored or processed within it. It is, in other words, a digital structure within which a certain amount of data is stored and saved. Such a structure certainly has its own physical dimension, determined by the number of components necessary for the archiving and reading of the data entered in it: those elements are not abstract (immaterial) entities, as they physically occupy a quantifiable portion of memory and may undergo operations which can be perfectly recorded by the operating system, such as creation, copying and deletion.
The file, therefore, despite lacking the requirement of a material perceptibility, is nevertheless characterized by an unquestionable physicality and materiality, as demonstrated by the fact that any digital files can be well transferred from one IT support to another, travel through the Internet, be stored and maintained within virtual (cloud) environments, all regardless of their positioning within physical structures directly apprehensible by man. On the basis of this interpretation, concludes the Court, the computer file not only can but must be considered as a movable property, presenting all the characteristics for being the object of the conduct of abduction and appropriation relevant in crimes against properties.
The Court also reminds that the validity of this interpretation is further confirmed by a parallelism with money, which as seen is expressly indicated as a possible object of embezzlement, together with the movable property. Well, money, in the same way as computer files, is clearly susceptible to accounting operations, as well as legally effective transfers, even in the absence of a material apprehension of the physical units representing the money amount; equally, conducts aimed at the removal or appropriation of the money are perfectly configurable, even in the absence of any physical contact with the money, through telematic banking operations.

The principle of law.
On the basis of these considerations, the judges considered it necessary to go beyond the previous case law by affirming the following principle of law: “computer data (files) can be qualified as movable properties under criminal law and, therefore, give rise to the crime of embezzlement the removal from a company personal computer, entrusted for work purposes, of the computer data saved there, subsequently providing for the deletion of the same data and the return of the formatted computer”. Will a similar change in interpretation be sufficient to grant a real and effective protection of digital files, fundamental part of the current intangible assets of any company?

Giorgio Rapaccini


ENVIRONMENTAL SANITIZATION AT THE TIME OF COVID-19: HOW TO RESTART PRODUCTION ACTIVITIES IN COMPLIANCE WITH LAWS AND REGULATIONS

29/04/2020

The environmental sanitization sector is subject to specific national and European regulations. Recently, it has been affected by emergency measures specifically aimed at regulating the sanitization service to prevent the spread of Covid-19. These measures, if not clear and unambiguous, complicate the resumption of production activities in compliance with the current legal framework. In fact, the violation of the rules exposes both the users of the sanitization services and the sanitization companies to risks. The latter may be subject to criminal, administrative and unfair competition sanctions.

 

The Covid-19 Epidemic has brought the spotlight on sanitization services, which in the coming months may affect all (or almost) public and private places where daily life in the country takes place.
Nowadays, many companies are offering environmental sanitization, sanitation and disinfection services. Caution though. The current emergency context, where ministerial directives and scientific reports on how to deal with the Covid-19 are often equivocal, exposes the companies to the risk of legal sanctions. The sanitization sector is, indeed, subject to specific regulations that concern both the products used [1] and the companies themselves which must meet certain requirements [2].

The first problem that arises is to understand which are the correct sanitization practices for Covid-19 and which products should be used according to the required procedure. The terms sanitation, sanitization and disinfection, although often used undifferentiated, have different meanings. The sanitization activity concerns the complex of procedures and operations aimed at making certain environments healthy through the activity of cleaning and/or disinfection and/or disinfestation. Disinfection is the process through which most pathogenic microorganisms are eliminated on inanimate objects. Finally, cleaning or sanitation consists of removing of organic and inorganic material from objects and surfaces and is usually performed using water and detergents.

A first directive concerning the correct sanitization procedure for Covid-19 was given by the Ministry of Health with Circular No. 5443 of 22/2/2020 (hereinafter also “the Circular”), which distinguishes the sanitization of hospital environments and non-hospital environments.

The sanitization of hospital environments
The Circular considers hospital environments to be at high risk of Covid-19 infection and indicates the following sanitization procedure:
1) cleaning with detergents; followed by
2) application of disinfectants for hospital use (sodium hypochlorite (0.1% -0.5%), ethanol (62-71%) or hydrogen peroxide (0.5%) suggested).
The Circular, therefore, suggests some disinfectants but does not exclude the use of other substances, as long as they are as effective as those mentioned.

The sanitization of non-hospital environments
The Circular indicates the following procedure for non-hospital environments in which a case of Covid-19 has been ascertained [3]:
1) cleaning with water and common detergents.
2) decontamination with recommended substances such as 0.1% sodium hypochlorite and 70% ethanol after cleaning with a neutral detergent.
In this case, the Circular does not expressly impose sanitization by means of disinfectants (as in the case of hospital environments), using the more generic term “decontamination”.

It should be asked whether the different wording used by the Circular (as well as the express distinction between hospital and non-hospital environments) implies the indication of a different sanitization procedure: specifically, whether only for hospital environments this should be done by means of disinfectants. This is a crucial aspect for the service operator since the qualification of a product as a disinfectant requires several fulfilments. As clarified by the Ministry of Health (see Communication 6/4/2020), all products claiming a disinfectant action are classified as biocides and can be placed on the market only after obtaining a specific authorization from the Ministry of Health or the European Commission [4]. Biocidal products are, in fact, subject to a preventive control in order to assess their effectiveness and safety for the consumer and the environment. It should be specified: products claiming sanitizing and/or germ and bacteria removal activities, if they do not have the above authorization, are not to be considered as disinfectants, but as common detergents. As such, they can be placed on the market for free sale [5] (see Communication of the Ministry of Health 20/2/2019).

As a result, two interpretations of the Circular seem abstractly possible.
According to the first, more liberal, for the sanitization of Covid-19 of non-hospital environments it would not be necessary to use disinfectants (in the sense of products legally qualifiable as such), with the conclusion that unauthorized products could be used.
Nevertheless, taking into consideration some scientific reports issued by competent bodies, another more rigorous and prudent interpretation of the Circular seems possible. In particular, the Recommendation of the Higher Institute of Health of 29 March 2020 states that products with disinfectant properties must be used for the environmental sanitization of Covid-19. As a logical consequence, the term “decontamination” implies, however, the use of a quid pluris with respect to common detergents, and therefore of real disinfectants (as such, specifically authorized by the competent authorities).

The legal requirements for sanitization companies
In addition to products compliance, the companies offering a sanitization service must meet all legal requirements (see Law No 82 of 25 January 1994 and Ministerial Decree No 274 of 7 July 1997).
Specifically, Ministerial Decree No 274 of 7 July 1997 identifies the specific requirements of “economic-financial capacity” and “technical and organizational capacity” for the exercise of sanitization activities. The latter, in particular, must be possessed by the owner, a partner or a person responsible for the technical management of the company with the exclusion of an external consultant.
The requirements of good reputation (e.g. absence of criminal sanctions, preventive measures, labor and social security fines) are provided by Article 2 of Law no. 82 of 25 January 1994 and must be possessed by different persons, depending on the type of business.
Sanitization companies that do not meet the above requirements are subject to administrative sanctions. In this respect, the ANID (National Association of Disinfection Undertakings) has announced legal actions against non-compliant companies.

In conclusion, the company already qualified to carry out sanitization services gains a competitive advantage compared to those that only recently decided to operate in this sector. This advantage is the result of years of investments, work and fulfilments. The current epidemic context, although dominated by the need for rapid responses, cannot lead to the liberalization of a specifically regulated sector. In this regard, it is worth remembering that the need to ensure compliance with the rules and procedures – as well as to provide operators with the necessary tools for the correct execution of the Covid-19 sanitization – is aimed at protecting public health and the environment.
It is clear that sanitization activities, as required by current legislation (particularly with regard to hospital environments, but also in the case of private offices when there has been an established infection), constitute a specific obligation for the company, which is required to comply with a series of measures in order to protect its employees, collaborators and users. The violation of the obligations, in addition to being sanctioned in administrative and criminal proceedings, could expose the company to liability for damages in the event that the sanitization is not carried out or is carried out incorrectly, and further contagion occurs.
A precise and unambiguous use of legal terms is therefore advisable in order to promote company compliance and to discourage any predatory behavior in the sanitization sector. In this regard, it should be noted that misleading advertising relating to one’s own products/services or the qualities possessed by the entrepreneur could also constitute a competitive offence. In particular, unfair competition for appropriation of the merits of others (see Art. 2598 no. 2 of the Italian Civil Code) occurs when an entrepreneur, in forms of advertising or equivalent, attributes to his products merits and qualities not possessed by them but belonging to the products of a competitor, thus disturbing the free choice of consumers. Similarly, it constitutes an act of unfair competition to carry out activities in violation of public rules, a situation that could occur if the company proposes itself for sanitization services in violation of the rules governing this specific sector and indicated above. The violation of the competition rules could be claimed in several areas, including, for example, before the antitrust authorities (with regard to misleading communications), i.e. the civil courts, with the possibility of applying sanctions such as injunction, publication, compensation for damages.

[1] Among others, see the EU Regulation 528/2012 on Biocidal products and the Decree 392/98 on medical surgery devices.
[2] The requirements that sanitization companies must meet are provided by Law No 82 of 25 January 1994 and Ministerial Decree No 274 of 7 July 1997.
[3] In particular, the shared Protocol for the regulation of measures to combat and contain the spread of Covid-19 in the work environments, dated 14/3/2020, sets out a series of indications for the sanitization of offices and factories. In case of confirmed cases of Covid-19, the Protocol refers to the provisions of the Circular (see point 4. of the shared Protocol).
[4] Specifically, products containing an active substance already approved under EU Regulation 528/2012 are exclusively regulated by this Regulation and placed on the market as biocidal products. Products containing an active substance under review in accordance with EU Regulation 528/2012 may be placed on the Italian market pursuant to Decree 392/98 as medical surgery devices.
[5] Unlike disinfectants, detergents are composed of chemical substances that act physically or mechanically to remove organic or inorganic material from surfaces, exerting a cleaning action.

Simona Lavagnini, Camilla Macrì


THE BALANCE BETWEEN THE PROTECTION OF INTELLECTUAL PROPERTY AND PRIVACY: ARE THE EMAIL AND IP ADDRESSES OF COUNTERFEITERS INFORMATION THAT CAN BE PROVIDED TO RIGHT HOLDERS?

21/04/2020

In his Opinion of April 2, 2020, the Advocate General Saumandsgaard Øe, in the Constantin Film v. YouTube case, C-264/19 pending before the Court of Justice, stated that YouTube and Google are not required to provide the email and IP address information belonging to a user who is infringing intellectual property rights under the Enforcement Directive.

 

The preliminary question arises in the context of a dispute between Constantin Film Verleih GmbH, a German film distributor, and the US companies YouTube LLC and Google Inc. and concerns the refusal of the latter to provide Constantin Film Verleih with information relating to users who have published several films on the internet infringing its exclusive exploitation rights and, in particular, e-mail addresses, telephone numbers and IP addresses pertaining to those users.

The Bundesgerichtshof (Federal Court of Justice, Germany) inquired the Court of Justice whether such information falls within the scope of Article 8, par. 2, lett. a of Directive 2004/48/EC (2), better known as the Enforcement Directive, under which the competent judicial authority may order the disclosure of the “name and address” of certain categories of individuals linked to goods or services infringing an intellectual property right.
Pursuant to the conclusions of Advocate General Henrik Saugmandsgaard Øe, rendered on April 2, 2020, the concepts of “name and address” must be defined in accordance with their common meaning in current language, taking into account the context in which they are used and the aims pursued by the relevant legislation. In detail, the notion “address” would concern only the postal address and not also the telephone number, e-mail address and IP address. Such an interpretation is supported by the fact that, when the EU legislator wanted to refer to the email address or IP address, it did so explicitly, by supplementing the term “address” with the suffixes “email” and “IP”. There is no example of a Union legislative act in which the terms “name and address”, used alone and in a general context, would refer to the telephone number, IP address or e-mail address.

Nor is it possible, according to the conclusions referred to, to interpret that provision ‘dynamically’ or teleologically, considering that the terms used in Article 8(2)(a) of Directive 2004/48 do not offer sufficient scope for such an interpretation to include the information referred to in the preliminary questions.

In conclusion, the Advocate General made it clear that, although it is indisputable that the Enforcement Directive aims to ensure a high level of protection of intellectual property in the internal market, there is no rule or judgment of the Court which has established that the intellectual property right is intangible and that its protection must therefore be absolutely guaranteed: the interpretation proposed by Constantin Film Verleih would therefore unjustifiably increase the level of protection of intellectual property in the internal market and would call into question, in a way which is favorable to the interests of IP rights holders, the balance established by the Union legislator between precisely intellectual property rights and the interests and fundamental rights of users of protected material, including the right to privacy.

The final decision of the Court, which may not even be in line with the conclusions of the Advocate General, is therefore highly expected, given that access to personal data of users guilty of infringements of intellectual and industrial property rights has long been the subject of discussion.

In our legal system, the ostentation of the data of the authors of the unlawful conduct is in itself admissible: articles 156bis and 156ter l. 633/1941, introduced precisely following the implementation of the Enforcement Directive, in fact expressly provide for the possibility for the holder of the rights to request an order of discovery of the data of the infringers (in particular art. 156bis provides, among other things, that the party has provided serious elements from which it may reasonably be inferred that its claims are well-founded and that the judge may order the other party to provide the elements for the identification of the persons involved in the production and distribution of the products or services that constitute an infringement of the rights under this law). The court’s order may or may not be subject to special confidentiality protection measures.

In Italy, the issue was addressed in 2008 in relation to data collected and processed by Telecoms in relation to P2P users. After the granting of initial precautionary disclosure orders by the Court of Rome, the courts have radically changed and have ruled in the sense of a total closure with respect to access to users’ IP addresses, also as a result of the position taken by the Guarantor for the Protection of Personal Data, which intervened directly in some judgments supporting the nature of traffic data of such IP addresses (see the well-known Peppermint case).

However, this issue came up again some years later, in 2015, in relation to data collected and processed by online platforms. The Court of Turin, commercial division, by order of June 3, 2015 in the case “Delta TV Programs v Dailymotion”, ordered the video sharing platform to provide the rights holder with the data in its possession useful to identify those responsible for infringements committed by uploading files of protected works, thus balancing the rights and stating that “Community law does not require Member States to establish an obligation to communicate personal data in order to ensure the effective protection of copyright in the context of civil proceedings, but neither does it prohibit it”.
This line had already been outlined by the Tribunal de Grand Instance of Strasbourg which, on January 21, 2015, ordered four of the main service providers to provide an anti-piracy association with “the identity, postal address, e-mail address of the persons holding the IP addresses listed in the minutes”.
Moreover, the Italian Supreme Court itself, with sentence no. 7783 of April 3, 2014, had stated that the interest in the confidentiality of personal data should yield to the defence needs of other legally relevant interests, including the exercise of the right of defence in court, provided that the request was relevant to the defence and not exceeding its purpose.

More recently, in 2019, the Court of Milan, commercial division, during a series of proceedings instituted by the rights holders against hosting providers aimed at obtaining an injunction against access by the recipients of their services to IP addresses and domain names relating to IPTV that transmitted Serie A Football Championship content without authorization, expressly ordered some hosting providers to provide the holder of the rights with all the information in their possession that would allow the identification of the recipients of their services with which they had data storage agreements, with regard to IPTV services subject to trial, such as name, surname, date of birth, place of birth and address of residence, tax code, or name and registered office and identification number for tax purposes or registration in the commercial register, or similar, in the case of a legal entity (however, with regard to companies, the issue of data protection does not arise).

In the same view, it is also worth noting that the Court of Rome, issued on March 13, 2019, ordered the defendant, as an information service provider, to provide the applicant, the holder of the rights, with the requested identification data in its availability to identify the operators of portals broadcasting illegal content, specifying that such order was necessary to ensure effective protection of its copyright.
Recent measures in Milan and Rome, among other things, have not made the disclosure of data subject to any security measures.

Finally, it should be recalled that at the EU level there is a guideline stating that, in balancing between copyright protection and data privacy protection, data should be allowed to be disclosed when the rightholder has no alternative means of protection (judgment of the Court of Justice of October 18, 2018 in Case C-149/17 Bastei Lübbe GmbH & Co. KG v. Michael Strotze). In this case, the European Court of Justice has established that the holder of an internet connection that can be used by several members of the same family, through which copyright infringements have been committed by means of file sharing, cannot avoid communicating who has actually committed the infringement by simply enclosing the fundamental right to respect for private and family life, the protection of which falls under Article 7 ECHR, if the consequence is the total deprivation of any means of appeal in favour of the copyright holder.

In the light of the case-law mentioned above, the Advocate General’s conclusions are therefore excessively formalistic. Indeed, it is questionable whether the common meaning of “address” is solely that of physical address and not also that of electronic address. If it is true that the Dictionnaire de l’Académie française cited in the opinion herein discussed defines the address as “the designation of the place where one can reach someone”, it is also true that according to our Treccani the “address” is, among other things, “the set of alphanumeric data through which it is possible to send an email to a person”. Moreover, in the digital age in which we find ourselves, it is also reasonable to believe that in fact the place where a person can be reached may also be determined by the email address and IP address.

It is consequently expected that the decision of the Court of Justice will deviate, at least in part, from the rigid conclusions of the Advocate General, and that the rights holders will thus be able to obtain as much information as possible in order to identify the persons who have committed violations, in compliance with the protection of personal data and therefore in a relevant manner and not exceeding the purpose of the right of defence.

Margherita Stucchi


LGV AVVOCATI ONCE AGAIN MENTIONED BY LEGAL 500 AMONG THE LEADING INTELLECTUAL PROPERTY FIRMS IN ITALY

17/04/2020

For Legal 500 LGV Avvocati is ranked in Band 3 on intellectual property and in Band 2 on copyright in Italy and reports some feedback from clients interviewed according to which: “The team is incredibly client-focused and solution-oriented. The team members are fantastic at keeping their clients up-to-date and informed of all developments in cases”, “Simona Lavagnini is a go-to lawyer in Italy for copyright matters. She has very solid industry knowledge and is very attuned to the priorities and objectives of her clients. Her advice is cutting edge as well as clear and practical. She also gets involved in the technical and logistical aspects of preparing a case, which can be quite complex in piracy cases”.
Alessandro Bura – senior associate of LGV Avvocati – has been nominated among the “Rising Star 2020”, a category that rewards the best young lawyers.

AMAZON MARKETPLACE AND TRADE MARK INFRINGEMENT: RECENT RULING OF THE COURT OF JUSTICE OF THE EUROPEAN UNION

14/04/2020

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 fact
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.

Valentina Cerrigone