Coty Germany v Amazon
The Court of Justice of the European Union (CJEU) has ruled in Coty Germany GmbH v Amazon (C-567/18) that an online marketplace is not liable for ecommerce trade mark infringement by storing goods on behalf of a third party seller where it has no awareness that those goods are infringing.
The plaintiff, Coty Germany, distributes perfumes. Coty Germany claimed that two Amazon Group companies infringed the trade mark rights in ‘Davidoff’ by storing ‘Davidoff Hot Water’ perfumes and by handing them to delivery companies on behalf of third parties acting on the Amazon Marketplace. Coty Germany initially pursued the claims before the courts in Munich, which rules in Amazon’s favour. Following Coty Germany’s appeal, the German Federal Court of Justice referred the case to the CJEU with the following question:
“Does a person store goods “for the purpose of offering them for sale or putting them on the market” if this person stores the goods on behalf of a third party without being aware of the infringement and if only the third party intends to offer the goods or put them on the market?”
The CJEU answered “no” to the question, going on to explain that a company providing the storage of goods only infringes trade mark rights if it also pursues the aim of offering the goods for sale or putting them on the market.
This decision will come as a relief to ecommerce brands and online marketplaces, although it does follow a previous decision on a similar matter concerning eBay (L’Oréal C-324/09). However, given that the CJEU limited its analysis to answering only the above question, it could also be viewed as a missed opportunity to provide further guidance on the meaning of “use” in relation to ecommerce trade mark infringement. Amazon promotes its service under the slogan “send us the goods, we take care of the rest”. In his opinion before the case, the Advocate General commented that Amazon performs an active role in the sales process and has direct or at least indirect possession of the goods, and this could constitute “use” of a trade mark. Arguably, this active role goes beyond the usual services provided by a storage company.
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