No Amazon trade mark breach through storage alone: CJEU

Online retailer Amazon did not infringe a trade mark where goods were sold through its online marketplace by a third party, and Amazon only stored the infringing goods without being aware of the infringement and did not itself market them, the EU Court of Justice has ruled.

A five judge chamber of the court gave the preliminary ruling in a case referred by the German Bundesgerichtshof, brought by Coty Germany, a distributor of perfumes, which held a licence for the EU trade mark Davidoff. It claimed that two Amazon group companies infringed its rights in that mark by storing and dispatching bottles of "Davidoff Hot Water" perfume offered for sale by third party sellers on Amazon-Marketplace (www.amazon.de), although those bottles were not put on the EU market with its consent.

In its reference the German court stated unequivocally that the Amazon companies concerned did not themselves offer the goods for sale or put them on the market, and the third party seller alone pursued that aim.

The court answered that on those facts there was no infringement. In order for the storage of infringing goods to be classified as "using" the trade mark in question signs, it was necessary for the operator providing the storage itself to pursue the aim referred to by the Trade Mark Regulation, which was offering the goods or putting them on the market. Without that, "it cannot be concluded that the act constituting the use of the trade mark is carried out by that person, or that the sign is used in that person’s own commercial communication".

In the present case, as regards Amazon, "the referring court states unequivocally that they have not themselves offered the goods concerned for sale or put them on the market, [and] that it is the third party alone who intends to offer the goods or put them on the market. It follows that the respondents do not themselves use the sign in their own commercial communication".

The court observed that its conclusion was "without prejudice to the possibility of considering that [the Amazon companies] themselves use the sign in connection with bottles of perfume which they stock not on behalf of third party sellers but on their own behalf or which, if they were unable to identify the third party seller, would be offered or put on the market by those parties themselves".

Click here to access the judgment.