LexGo

CJEU renders important decision on the liability of online platforms in trade mark infringement cases
07/04/2020

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.

Voir aussi : Nautadutilh Avocats Luxembourg Sàrl ( Mr. Vincent Wellens )

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

Mr. Vincent Wellens Mr. Vincent Wellens
Partner
[email protected]

Click here to see the ad(s)
Tous les articles Droit Européen

Derniers articles Droit Européen

The CJEU extends Achmea to intra-EU Energy Charter Treaty arbitrations
02/09/2021

In a judgment dated 2 September 2021 in Komstroy v Moldova (Case C-741/19), the Court of Justice of the Eur...

The CJEU extends Achmea to intra-EU Energy Charter Treaty arbitrations Read more

Draft revised vertical regulation and guidelines
19/07/2021

The European Commission takes a hard line against online platforms, dual distribution and MFNs

Draft revised vertical regulation and guidelines Read more

General Court of the CJ annuls State aid decision in Amazon case
13/07/2021

The case concerned the arm’s length nature of a royalty paid by a Luxembourg operating company (LuxOpCo) to a L...

General Court of the CJ annuls State aid decision in Amazon case Read more

Favourable CJEU clarification on the VAT exemption for fund management services
22/06/2021

On 17 June 2021, the Court of Justice of the European Union (CJEU) rendered its judgment in joined cases K (C-58...

Favourable CJEU clarification on the VAT exemption for fund management services Read more

Derniers articles de Mr. Vincent Wellens

New rules on material IT outsourcing in the financial sector
15/10/2021

Effective 15 October 2021, financial institutions must notify the CSSF of any planned outsourcing of material IT activitie...

Read more

Insufficient cybersecurity measures under GDPR: 100k EUR fine in Belgium & key fines elsewhere
29/04/2021

On 26 April 2021, the Litigation Chamber of the Belgian Data Protection Authority (BDPA) handed down its first fine specif...

Read more

Regulatory changes in the audiovisual media sector
16/04/2021

The Act of 26 February 2021 and certain grand ducal regulations have transposed into Luxembourg law the Audiovisual Media ...

Read more

New bill brings Luxembourg to the forefront of distributed ledger technology
17/03/2021

On 22 January 2021 Parliament approved Bill 7637, which modified:  the Law of 5 April 1993 on the financial sec...

Read more

LexGO Network