CJEU’s judgment in Coty (C-567/18) is appropriately summarised in the Court’s own press release: “The mere storage by Amazon, in the context of its online marketplace (‘AmazonMarketplace’), of goods which infringe trade mark rights does not constitute an infringement by Amazon of those trade mark rights”.
Coty Germany is a perfume distributor and licensee of the EU trade mark “Davidoff” for perfumes. Coty initiated proceedings in Germany against two companies of the Amazon group (Amazon Services Europe and Amazon FC Graben) alleging trademark infringement.
Amazon Services Europe enables third-party sellers to place offers for sale in respect of their goods in the ‘Amazon-Marketplace’ section of the website www.amazon.de. In the event of sale, contracts concerning those goods are concluded between the third-party sellers and the purchasers. Those third-party sellers may also avail themselves of the ‘Fulfilment by Amazon’ scheme, under which goods are stored by Amazon group companies, including Amazon FC Graben, which operates a warehouse. Those goods are dispatched by external service providers.
Coty was unsuccessful and the dispute was brought before the Bundesgerichtshof (“BGH” – Federal Court of Justice, Germany) on points of law. The BGH framed the dispute as a question of whether a person who, on behalf of a third-party seller, stores goods without being aware that they infringe trade mark rights, itself uses that trade mark.
Coty disputed that this was an accurate description of the case, arguing that the role of the defendants was not that of a mere warehouse-keeper. However, the CJEU ruled it need not examine the case in a wider context than the BGH’s framing of the dispute, although it added that “… [it] has before it the factual and legal material necessary to give a useful answer to the question submitted to it. It is clear from the order for reference, first, that Amazon Services Europe enables third-party sellers to place offers for sale in respect of their goods in the ‘Amazon-Marketplace’ section of the website www.amazon.de and, second, that Amazon FC Graben operates a warehouse in which the goods concerned were stored.”
Referring to its earlier relevant case law, the CJEU arrived at the conclusion that “Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark and Article 9(3)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark must be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark 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 itself pursue those aims.“
So, entities, in these circumstances, which do not themselves pursue the aim of offering the infringing goods or putting them on the market, do not use the trademark and, therefore, do not infringe upon it.
The judgment is certainly good news for Amazon, and, more widely, online platforms or other providers that store goods. But, this may not be the end of the story. As the CJEU itself points out, its judgment does not address potential liabillity of Amazon as an intermediary or in the context of ISPs safe harbour legislation. It is interesting that the Advocate General in his Opinion did not restrict himself to address the case, as described by the BGH, but also examined the case, taking into consideration a global view of Amazon’s scope of services provided in the Amazon-Marketplace.