By Michael Sweeney, Director of Service Delivery & Legal Counsel at Corsearch
Key Take Outs:
- Long-awaited CJEU Judgment in luxury goods house Coty’s
trade markbattle with Amazon
- Amazon’s storage of fake goods does not amount to trade mark infringement
- Many aspects of Amazon’s role in offering counterfeits not examined and remain up for
Global e-commerce platform Amazon is not liable for “mere storage” of counterfeit goods in its warehouses, according to a Judgment handed down on 2 April 2020 by the Court of Justice of the European Union (“CJEU”).
By merely storing counterfeit goods, Amazon was not “pursuing the aim of offering goods for sale or putting them on the market” and had not used Coty‘s
The decision – at first glance – represents a setback for brands in the ongoing battle to protect their trade marks online. However, as with all legal cases involving trade marks, the devil is in the detail…
Coty sued Amazon alleging infringement of the Davidoff trade mark. Coty’s position (broadly) was that Amazon’s practice of storing and despatching fake Davidoff fragrances (on behalf of third party sellers) gave rise to liability for trade mark infringement.
Both the first instance and
Undeterred, Coty sought guidance from the CJEU on the following, narrowly framed question:
“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 under Article 9(3)(b) EUTMR, 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 Advocate General’s Opinion (December 2019) appeared heavily to indicate that, on these facts, Amazon may potentially be liable (in particular noting that if a party actively contributes to the distribution of infringing goods – for example through Amazon’s
The 2 April 2020 Judgment
It focusses tightly on the idea that in order for Amazon’s practice of storing of goods bearing trade marks to amount to “use” of the trade mark, it has to “pursue the aim of putting the goods on the market”. Without this, Amazon is deemed not to be using the mark. Nor is the sign being used as part of Amazon’s “commercial communication”.
On this basis, Amazon was found not to infringe Coty’s
While Amazon has (predictably) declared the result to be a resounding victory (commenting through its press channels that it “continues to invest heavily in fighting bad actors and is committed to driving counterfeits to zero”),
First, the CJEU was asked a narrow,
Second, the concluding remarks in the Judgment make clear that trade mark owners are still able to proceed under an alternative, legislative heading (including the IP Enforcement Directive) leaving open the possibility of securing relief against platforms, notwithstanding this recent decision. This concluding statement reiterates the narrow approach taken by the Court and appears to concede that there is still much to examine in this area.
Simon Baggs, President, Brand & Content Protection at Corsearch commented, “the laser-focussed scope of the question asked by the German Court is reflected in this Judgment. The reality is that only a tiny fraction of Amazon’s business has been
This blog was originally published on the Incopro website. Incopro was acquired by Corsearch in 2021, with the two organizations combining their technology and expertise to better serve the market.