AG says Amazon is responsible for detecting infringing products
An Advocate General for the EU General Court has held that if a company is “actively involved” in the commercial distribution of products, it should take steps to ensure the products do not infringe a third party’s IP rights.
In his opinion, issued yesterday, November 28, Manuel Campos Sánchez-Bordona said that even if a company is ignorant of the infringement, it is still not exempt from the responsibility of taking steps to detect that infringement.
The dispute concerns Coty Germany’s licence for the perfumery, essential oils and cosmetics of the Davidoff brand, to which it owns trademark rights.
In 2014, Coty Germany discovered that a Davidoff perfume, Hot Water, was being sold on Amazon’s Germany website without authorisation.
Coty asked Amazon to remove all the perfumes from the seller’s possession and disclose the details of the seller.
After Amazon did not specify the details of the seller, Coty launched an action against Amazon at the Bundesgerichtshof Federal Court of Justice, but the court rejected its claims.
The court said Amazon had not played a part in the infringement and had simply stored the perfumes for the seller under its Amazon Logistics programme.
After Coty contested this decision, the court referred the following question to the General Court:
“Does a person who stores for a third party products that infringe a trademark right, without having knowledge of such infringement, have these products in order to offer or market them, when it is not itself but only the third party that intends to offer or market the products?"
In his opinion, Bordana said that although it is clear that only the seller or third party intends to offer or market the products, a company does not store products that infringe a trademark right without having knowledge of the infringement.
Bordana said that by storing the seller’s products through its Logistics programme, it was “actively involved” in the commercialisation of the product.
Although mere stockists cannot be required to have a special obligation to ensure that infringement does not take place on their platform, “the picture is different when it comes to companies, such as Amazon, which, by providing their services under the Amazon Logistics programme, are actively involved in the marketing of products,” Bordana said.
He added that this involvement demanded special care and diligence of the legality of the goods involved.
Without this control, it would be easy for Amazon to serve as a channel for the sale of “illicit, counterfeit, pirated, stolen goods”, he added.
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