Friday, 2. December 2022

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ECJ: Mere Storage of Goods is no Trademark Infringement yet

The European Court of Justice has ruled that the mere storage of trademark infringing goods does not yet constitute a trademark infringement itself, Press Release No. 39/20 of April 2, 2020.

1. What was the case about?

A company offered perfumes on the Amazon marketplace that infringed the trademark rights of the trademark holder (“Davidoff Hot Water”). This is undisputed, and this violation of trademark rights is not at issue here.

These trademark infringing perfumes were stored and dispatched by 2 companies of the Amazon group. And here the question arises as to whether Amazon can be accused of  trademark infringement solely by storing and shipping trademark infringing products.

2. Case history

The Federal Court of Justice referred the question to the European Court of Justice and wanted to know whether a company that stores trademark infringing goods for another (so-called third party supplier) without being aware of the trademark infringement, uses this trademark itself and thereby commits its own trademark infringement.

3. The decision of the ECJ

The answer of the ECJ: A company that stores goods only infringes a trademark if, like the seller, it pursues the purpose of offering the goods for sale or putting them on the market.

4. Supplementary information from the ECJ

Although the warehouse keeper and shipper have not themselves infringed  trademark rights, claims by the trademark holder may exist based on the Directive on e-commerce and / or the Directive on the enforcement of intellectual property rights.

5. What does this mean for the logistics service provider?

Storage and shipping are typical services of a logistics service provider. On the basis of the ECJ ruling now available, the logistics service provider can assume that it has not yet committed its own trademark infringement by merely storing and shipping goods that infringe trademarks. At least this is the case as long as he is not pursuing the purpose of offering the goods for sale or bringing them into circulation.

P.S .: If I remember correctly, quite the same was decided a good 10 years ago by the District Court in Mannheim in favor of one of my logistics clients, back then in the television sector. But now we have it again “in black and white” from the ECJ for the perfumes sector. This is good news.

Dr. Wolfgang Gottwald
Attorney at Law

(Original Version in German. English translation largely provided by Google Translator. Errors possible)

DR. GOTTWALD
Rechtsanwalt
Attorney at Law

Leopoldstraße 51
80802 München

Tel.: 089/383 293-10
Fax: 089/383 293-13

w.gottwald@kanzlei-dr-gottwald.de