CJEU renders important decision on the liability of online platforms in trade mark infringement cases

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.

Related : Nautadutilh Avocats Luxembourg Sàrl ( Mr. Vincent Wellens )

[+ http://www.nautadutilh.com]

Click here to see the ad(s)
All articles European Law

Lastest articles European Law

New mandatory automatic exchange of information rules for Digital Platforms “DAC7”

On 15 July 2020, the EU Commission published a directive proposal (the “DAC7 Proposal”), amending, for the 6th...

Read more

Brexit uncertainty forces UK FCA to re-open the TPR

In light of the ongoing Brexit discussions, the UK Financial Conduct Authority (FCA) has decided to re-open the temporary ...

Brexit uncertainty forces UK FCA to re-open the TPR Read more

Optional deferral of the EU Mandatory Disclosure Directive reporting obligations

On 24 June 2020, the Council of the European Union (the Council) adopted an amendment to the Mandatory Disclosure Directiv...

Read more

CJ rules Luxembourg fiscal unity regime infringes EU law (B & others)

On 14 May 2020, the CJ delivered its judgment in case B and Others v Administration des contributions directes (...

CJ rules Luxembourg  fiscal unity regime infringes EU law (B & others) Read more

Lastest articles by Mr. Vincent Wellens

Luxembourg law on e-signature and other trust e-services now fully consistent with the eIDAS Re...

Bill No 7427 was adopted on 17 July 2020 and published on 28 July 2020 (click here). The new law modifies the Luxembo...

Read more

Schrems II: What is (or should be) on your to-do list for international data transfers?

Today, on 16 July 2020, the Court of Justice of the European Union (CJEU) handed down its Schrems II judgment in...

Read more

Data protection impact assessments: new EDPS recommendations

On 6 July 2020, the European Data Protection Supervisor (EDPS) published a report on the use of data protection impact ass...

Read more

CJEU rules that free samples of OTC medicinal products can be provided to pharmacists

On 11 June 2020, the Court of Justice of the European Union (CJEU) confirmed that it is prohibited to distribute free samp...

Read more

LexGO Network