Analysis: “CJEU rules that an online marketplace storing and dispatching infringing products, without itself selling these items on the platform, does not infringe trademark” by Sabine Jacques
Earlier this week, the Court of Justice of the European Union (CJEU) ruled that the German Amazon Marketplace which stored and dispatched goods on behalf of a third party, which was infringing Coty’s licence in a trade mark, is not liable for infringement unless the Amazon marketplace also sells these infringing products itself under Article 9(2)(b) of Council Regulation 207/2009 on the EU trademark and Article 9(3)(b) of Regulation 2017/1001 on the European Union trade mark.
The facts in Coty v Amazon (C-567/18) are simple. A distributor of perfumes and licensee of the EU trademark ‘Davidoff’, Coty, claims that two Amazon group companies infringed the trade mark by storing and dispatching perfume bottles put on sale without prior consent by a third party seller on the German Amazon marketplace. Although the German first instance and appeal courts did not hold that there was an infringement in this case, the German Federal Court of Justice (Bundesgerichtshof) decided to stay the proceedings and asked the CJEU whether a company which stores and dispatches goods on behalf of a third-party seller can infringe a trademark if it was not aware of the infringement by the third-party seller under Article 9(2)(b) of Regulation 207/2009 and Article 9(3)(b) of Regulation 2017/1001.
In its reasoning, the CJEU firstly clarified that there is a ‘use’ of a trade mark when goods are offered, put on the market or stocked for these purposes (paragraph 33). Whilst this is not a surprise to many in this field, the interesting question revolved around whether storing without selling could be considered as a use of a trademark on behalf of Amazon marketplace (paragraph 35). Focusing on the interpretation of ‘use’, the CJEU first notes that the absence of statutory definition does not mean that there is no guidance as to its interpretation. The CJEU had the opportunity to clarify this concept on several occasions and interpreted it as involving ‘active behaviour and direct or indirect control of the act constituting the use’ (paragraph 37). In other words, the important element is the active behaviour of the alleged infringer (the CJEU at paragraph 37 refers here to Daimler, C-179/15, paragraphs 39 and 40; and, Mitsubishi Shoji Kaisha and Mitsubishi Caterpillar Forklift Europe, C-129/17, paragraph 38). Here, the CJEU holds that only a third party which has direct or indirect control over an act can eventually put an end to the infringing activity (paragraph 38). If an online marketplace simply provides the conditions for third parties to advertise their products, the platform itself does not infringe trademarks by displaying the protected signs (as already noted in L’Oréal and Others, C-324/09, paragraph 103). Therefore, if Amazon has no interest in how these products are displayed to customers on its platform, there is no ‘use’ under Regulation 207/2009 or Regulation 2017/1001 (paragraph 41). Agreeing with the Advocate General (AG), if the third party seller is the only one intending to offer or put the goods on the market, e-commerce platforms cannot be liable as these do not share the same intent (AG Opinion in C-567/18, point 67).
However, the CJEU did not entirely follow the AG’s Opinion. Indeed, where the AG had suggested that there could be ‘use’ if the e-commerce marketplace bore all the main activities on behalf of the third party, the CJEU was careful to limit its reasoning to the particular question referred by the German court without going any further. Therefore, if this week’s decision comes as good news for online marketplaces, this is unlikely to be the end of the discussion in this area.
We have seen a lot of developments on platform liability in copyright. However, jurisprudence as to whether a platform can be a jointly liable is still nascent in trade mark law and also engages the safe harbour located in Article 14 of the E-commerce Directive which establishes that if the platform merely publishes information shared by a user of the service, the service provider is not liable for this information stored at the request of a third party provided that certain conditions are met. Nevertheless, the scope of the answer provided by the CJEU does not allow the exploration of this interaction any further which is likely to still provide cause for concerns for e-commerce platforms.
Therefore, if the CJEU has reached the right conclusion in this particular case in my opinion, it remains unclear as to the liability of these service providers depending on the activities carried out by the online platform.
The Opinion is accessible here (not yet available in English)
The judgment is available here.
Sabine Jacques is is a Senior Lecturer in IP/IT/Media Law at the University of East Anglia.