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.
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