The Court Of Justice Of The European Union Provides Some Clarification On Third Party Liability Of Marketplaces In Trade Mark Infringement Disputes

• Published date: 26 May 2020
• Author: Mr Mark Prinsley
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Mayer Brown

On 2 April 2020, the Court of Justice of the European Union (the "CJEU") delivered its judgment in Coty Germany v Amazon (Case C‑567/18), in which the CJEU considered whether Amazon was liable for trade mark infringement for storing goods that infringed EU trade marks.

The CJEU clarified that Amazon was not using a trade mark within the meaning of Article 9 of Regulation (EU) 2017/1001 ¹ (the "EU Trade Mark Regulation") by storing, on behalf of a third-party seller, goods which infringe an EU trade mark when it was not aware of that infringement, as long as it did not itself offer the infringing goods for sale or put them on the market.

Background

Amazon operates the Amazon Marketplace which sellers can use to sell their products to customers. Entities in the Amazon group help sellers sell their products, for example by storing the products of the sellers and / or shipping them to the buyers.

Coty Germany ("Coty") is a distributor of perfumes and a licensee of the DAVIDOFF EU trade mark. In May 2014, Coty's test purchasers ordered a bottle of 'Davidoff Hot Water EdT 60 ml' perfume on www.amazon.de. The product was offered for sale by a third-party seller and dispatched by Amazon under the "Fulfilment by Amazon" service. The perfume bottle infringed the EU trade mark for DAVIDOFF (which Amazon was not aware of at the time) because it was not put on the market in the EU with Coty's consent. Subsequently, Coty sent a cease-and-desist letter with a penalty clause to the third-party seller.

In June 2014, Coty asked Amazon to return all the bottles of perfumes with the infringing EU trade mark which it stocked on behalf of the third-party seller. Amazon sent Coty 30 bottles of the perfume and later informed Coty that 11 out of the 30 bottles originated from a different seller. Coty asked Amazon to disclose the name and address of the second seller but Amazon refused.

Coty started court proceedings in Germany against several entities in the Amazon group, including Amazon FC Graben GmbH, which stored trade mark infringing perfume bottles on behalf of the sellers. Coty argued that by stocking goods that infringed Coty's trade mark and promoting the goods concerned on its website (www.amazon.de) Amazon violated previous EU trade mark legislation at Article 9(2)(b) of Regulation No 207/2009. Article 9(2)(b) of Regulation No 207/2009, substance of which is reproduced in Article 9(3)(b) of the EU Trade Mark Regulation, provided that:

"2. The following, inter alia,...