2 April 2020TrademarksSarah Morgan

Amazon storing infringing goods not TM infringement, CJEU rules

In a long-awaited ruling, the Court of Justice of the European Union (CJEU) has handed victory to  Amazon in a trademark dispute over the storage of infringing products.

Today, April 2, the CJEU concluded that the “mere” storage by Amazon of goods that infringe trademark rights doesn’t constitute an infringement by Amazon.

The court’s decision appears to reject the  advocate general’s opinion 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.

“A company which, on behalf of a third-party seller, stores goods without being aware that they infringe trademark rights does not itself use that trademark, so long as it does not pursue, like the seller, the aim of offering the goods for sale or putting them on the market,” said a  press release from the court.

Davidoff Hot Water

At issue in the dispute was perfume distributor  Coty Germany’s accusation that Amazon group’s companies had infringed its rights by storing and dispatching bottles of Davidoff ‘Hot Water’ perfume, offered for sale by third-party sellers on Amazon’s online marketplace.

Coty asked Amazon to remove all the perfumes from the seller’s possession and disclose the details of the seller.

But, after Amazon didn’t specify the details of the seller, Coty launched an action against Amazon, asking the German courts to order the two Amazon companies concerned to desist from such storage and dispatch.

Germany’s Federal Court of Justice (Bundesgerichtshof) rejected Coty’s claims, finding that Amazon hadn’t played a part in the infringement and had only stored the perfumes for the seller under its Amazon Logistics programme.

Coty appealed against the decision, and the Bundesgerichtshof subsequently asked the CJEU to ascertain whether a company that stores infringing goods on behalf of a third-party seller but isn’t aware of the infringement, uses the mark itself.

Today, Europe’s highest court concluded that for the company storing the goods to infringe the trademarks, the company must pursue (like the seller) the aim of offering the goods for sale or putting them on the market.

However, in this case, the Bundesgerichtshof had stated that the two Amazon companies concerned had not offered the goods for sale or put them on the market and it was only the third party that did so.

While the CJEU said that the Amazon companies had not themselves used the ‘Davidoff’ mark and so didn’t infringe, other provisions of EU law—in particular those on e-commerce and enforcement of IP rights—allow legal proceedings to be brought against an intermediary who has enabled an economic operator to use a trademark unlawfully.

A spokesperson for Amazon said that the company continues to invest heavily in fighting bad actors on its store and is committed to driving counterfeits to zero. 

“German courts have ruled in our favour in the first two instances of this proceeding, and based on our initial understanding of the judgment, we welcome the decision from the CJEU,” they added.

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Jurisdiction reports
14 August 2020   In a preliminary decision, the Court of Justice of the European Union ruled in April on the responsibility of Amazon warehouse-keepers for the sale by a third-party seller on the online marketplace of perfume bottles for which the rights had not been exhausted.
16 July 2020   A film copyright holding company is suing Amazon for allegedly streaming a 2002 spelling bee documentary on Prime Video without permission.
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