Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

France: Mere storage of infringing goods does not constitute trademark use

Sponsored by

beau-de-lomenie.png
warehouse indoor view

In a much awaited preliminary decision, the Court of Justice of the European Union (CJEU) ruled on April 2 2020 (C-567/18 Coty Germany GmbH v Amazon Services Europe Sarl et al) on the responsibilities of Amazon warehouse-keepers in relation to the sale by a third-party seller on the online marketplace, Amazon Marketplace, of perfume bottles for which the rights had not been exhausted.

On appeal filed by Coty, the Bundesgerichtshof (Federal Court of Justice, Germany) decided to refer a question for a preliminary ruling to the European Court of Justice. The question was as follows:

Can a person who, on behalf of a third party, stores goods which infringe trademark rights, without having knowledge of that infringement, be regarded as holding those goods for the purpose of offering them or placing them on the market if it is not that person but the third party who, alone, pursues the aim of offering the goods for sale or putting them on the market?

According to the court, the concept of "using", according to its "ordinary meaning", implies active behaviour and direct or indirect control of the act constituting the use (paragraph 37). The court adds that, "in order for the storage of goods bearing signs identical, or similar to, trademarks to be classified as "using" those signs, it is also necessary…for the economic operator providing the storage itself to pursue the aim referred to by those provisions, which is offering the goods or putting them on the market."

That means that the warehouse-keeper would have to himself pursue the aim of offering the goods for sale or putting them on the market.

The court therefore ruled that a person who, on behalf of a third party, stores goods which infringe trademark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market for the purposes of those provisions, if that person does not himself pursue those aims.

Thus the mere storage of goods by Amazon as a warehouse-keeper on behalf of a third-party seller does not constitute an infringement.

Aurélia Marie

more from across site and ros bottom lb

More from across our site

Chris Semerjian, MacNeal Darnley and Nicolas Charest provide an overview of trade secret law in Canada and reveal best measures to protect and enforce trade secrets.
Inspired by his former team at Pure Storage, Suvashis Bhattacharya wants to reward inventors with merchandise, he tells Managing IP in an exclusive interview
IP minister George Freeman said on Wednesday that plans for a broad text and data mining exception would not go ahead and that further consultation was needed
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The trademark battle over ‘MetaBirkin’ NFTs could inform future legal strategies and will provide at least some answers, whichever way it turns, say sources
The EPO BoA says the choice of format now rests with individual boards, sparking outrage from attorneys who say in-person hearings are the ‘gold standard’
Counsel at SMEs and private practice advisers say funding schemes are useful but must be backed by wider changes
Counsel welcome the Delhi High Court’s clarity on claim amendment but worry that its interpretation of the Patents Act negates statutory law
Kitchin is to hear the DABUS case before stepping down on September 29 this year
Numerous studies show that lawyers are increasingly stressed at work and looking for a way out, but law firms are still in denial