April 27, 2020
Coty Germany GmbH, a distributor of perfumes, is a licensee of the EU trade mark DAVIDOFF. Coty issued trade mark infringement proceedings against Amazon in relation to the storage and dispatch of bottles of “Davidoff Hot Water” perfume. The perfume was being sold by third-party sellers on Amazon-Marketplace (www.amazon.de), but had not been put on the EU market with Coty’s consent. Coty sought an order from the German courts that Amazon desist from the storage and dispatch of the perfume.
The German Federal Court of Justice asked the CJEU to interpret the EU Trade Mark Regulation (207/2009/EC). It wanted to ascertain whether a company which, on behalf of a third-party seller, stores goods that infringe trade mark rights, without being aware of that infringement, is using the mark by storing the goods for the purpose of offering them for sale or putting them on the market.
The CJEU held that, in order for there to be an infringement, the company providing the storage must have the aim of offering the goods for sale or putting them on the market. In this case, the German court had found that Amazon had not itself offered the goods for sale or put them on the market, and that it was the third-party seller alone that had that aim. It followed that Amazon had not itself used the DAVIDOFF mark.
That said, however, the CJEU noted that there are other provisions of EU law, in particular those on e-commerce under the E-commerce Directive ((2000/31/EC) and the enforcement of intellectual property rights under the Enforcement Directive (2004/48/EC), that allow legal proceedings to be brought against an intermediary who has enabled an economic operator to use a trade mark unlawfully. (Case C-567/18 Coty Germany GmbH v Amazon Services Europe Sàrl EU:C:2020:267 (2 April 2020) — to read the judgment in full, click here).