April 6, 2020
On 2 April 2020, the Court of Justice of the European Union (“CJEU”) rendered a judgment (C-567/18) clarifying the potential liability of Amazon and other operators of online platforms for trade mark infringement.
The Court was asked to rule on the question of whether Amazon had infringed Coty’s trade mark rights by storing and shipping infringing bottles of ‘Davidoff Hot Water’ perfume, which were offered for sale on the site not by Amazon but by third-party sellers. In this regard, it should be noted that the perfume itself was genuine but had not been placed on the EU market with Coty’s consent.
The case related to a particular aspect of Amazon’s activity, namely storing and shipping products offered for sale by third parties on Amazon’s platform, without knowledge of an infringement.
The CJEU examined whether storage could be regarded as ‘use’ of a trade mark for the purposes of Article 9(1) and (2) of the EU Trade Mark Regulation 2017/1001 (“EUTMR”) and, in particular, the ‘stocking’ of goods in order to offer or put them on the market (Art. 9(3)(b) EUTMR).
The Court answered this question in the negative:
“In order for the storage of goods bearing signs identical, or similar to trade marks 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. Failing 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“.
While it appears that the Court let Amazon off the hook in this instance, it is important to understand the scope of this decision. Indeed, the decision is expressly limited to the acts of storing and shipping infringing products offered for sale by a third party on the platform, without knowledge by the operator of the online platform of the infringement. Had Amazon stored the goods with the aim of offering or putting them on the market on its own behalf or used the trade mark in its own communications, it could have been held liable for direct trade mark infringement.
In addition, while the Court found that Amazon should not be held directly liable for trade mark infringement under the EUTMR for warehousing activities performed on behalf of third parties, it may still incur indirect liability on other grounds. Indeed, the CJEU recalled that where an economic operator has enabled another operator to make use of a trade mark, its role must, as necessary, be examined with reference to other rules of law, namely the e-Commerce Directive (2000/31/EC) or the IP Enforcement Directive (2004/48), which are not affected by this judgment.
Compliments of NautaDutilh – a member of the EACCNY.