The Court of Justice of the European Union (CJEU) has found that Amazon storing infringing products for a third party in its warehouse does not amount to trade mark infringement by Amazon.
Coty Germany v Amazon
In Coty Germany v Amazon (C-567/18) the CJEU considered whether the storage operation run by Amazon could be regarded as ‘using’ a trade mark for the purposes of Article 9(1) and (2) of Regulation 2017/1001 and, in particular, as ‘stocking’ infringing goods in order to offer them for sale or put them on the market.
The CJEU found that storage of infringing products for third party sellers did not amount to “using” a trade mark, specifically it found that a company providing the storage of goods only infringes trade mark rights if the company itself pursues the aims of offering the goods for sale or putting them on the market.
In this case it was found that “the two Amazon companies concerned have not themselves offered the goods for sale or put them on the market and that the third-party seller alone pursued that aim”.
Unfortunately, the question put to the CJEU by the German Federal Court of Justice was limited to circumstances where a company stores infringing goods. The CJEU did not therefore consider what the position would be if Amazon was offering other services in addition to storage and at what point those additional services would take a company into the realms of “offering the goods for sale”.
As a result, whilst the decision of the CJEU will be a welcome result to companies providing storage and warehousing services, it has left a number of questions unanswered regarding the liability of online retailers that unknowingly deal with infringing products.
If you would like further information on the CJEU’s decision or if you have any questions regarding trade mark infringement, please contact our Intellectual Property Team.