Is a natural person or a legal entity who stores goods which infringe trade mark rights on behalf of a third party, without being aware of that infringement, to be regarded as stocking those goods for the purpose of offering them or putting them on the market?

Background of the case.

The parties involved in the case are Coty Germany GmbH (hereinafter referred as “COTY”) and AMAZON. COTY distributes perfumes and holds an EUTM license “DAVIDOFF” for perfume-related products.  AMAZON offers to sellers the possibility to publish offers for sale on its website (amazon.de) and also offers these third parties the possibility to store their products by companies owned by the AMAZON group.

In May 2014, COTY ordered through amazon.de a perfume having on it the aforementioned EUTM from a third party. COTY subsequently requested this seller to cease this practice, claiming that the trademark rights were not exhausted, in particular in relation to the products previously stocked by the AMAZON group because they had not yet been placed in EU market.

Then, in June 2014, COTY requested to AMAZON to hand over all the perfumes that had under its premises from the seller who had been requested to cease its conduct on the AMAZON website. AMAZON does so, and COTY is also aware that there is another company that was offering also the same perfumes. COTY request the contact details of such seller, but AMAZON claims that it cannot disclose this kind of information.

COTY brings an action against AMAZON considering that the latter is infringing its trademark´s rights, requesting the cease and abstain from possessing or dispatching, by itself or by third parties, in the course of trade in Germany, perfumes bearing the terms “Davidoff Hot Water” which had not been yet placed on the EU market with its consent. Those actions were dismissed at first and second instance, and COTY finally appealed on a point of law, but before giving its decision, the referring court, the Bundesgerichtshof (Supreme Civil and Criminal Court in Germany), decided to stay the proceedings and refer the following question to the Court of Justice for a preliminary ruling:

‘Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?’

The preliminary ruling´s decision.

The Court states that it is necessary to determine whether the stock action can be regarded as ‘use’ of the trade mark within the meaning of Article 9(1) of Regulation No 207/2009 and Article 9(1) and (2) of Regulation No 2017/1001, and in particular as ‘storage’ of those goods for the purposes of sale or marketing within the meaning of Article 9(2)(b) of Regulation No 207/2009, the content of which is essentially reproduced in Article 9(3)(b) of Regulation No 2017/1001.

Following the relevant assessments, it is decided that Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation No 2017/1001 are to be interpreted as meaning that a person who stores goods in stock on behalf of a third party which infringe a trade mark right, without being aware of that infringement, is not to be regarded as stocking those goods for the purpose of offering them for sale or putting them on the market within the meaning of those provisions where he does not himself pursue those ends.

Judgment of the CJEU (Fifth Chamber) of 2 April 2020 in Case C-567/18