The storage of goods with counterfeit marks is not always unlawful

The e-commerce hosting company stocking goods for third-party companies that infringe trademarks rights of others is not liable for the trademark infringement if it is unaware of it.

This was stated by the European Court of Justice (CJEU) with judgment of April 2nd 2020 case C-567/18.

The case started from the action brought by a famous trademark licensee against certain e-commerce companies with the accusation of trademark infringement for having stocked and put on sale third-parties products bearing the trademark without the required authorization.

The Court, addressing the matter, first analyzed article 9 section 1, 2 and 3 of the Regulation n. 2017/1001, according to which a European trademark confers on the owner the exclusive right to prohibit third parties from using on the market a similar or identical sign in relation to similar or identical goods or services to those for which the trademark is registered, if this use gives rise to a risk of confusion in the public.

On section 3, the Regulation gives a non-exhaustive list of possible “uses” that could involve the activation of protection: the offering, the placing on the market or the stocking of goods for those purposes, or the offering or supplying of services under the trademark.

On this matter, the Court explained that, for the activation of the above-mentioned protection, the “use” of the trademark must imply an active behavior and a direct or indirect control of the act constituting the use.

In this particular case, the companies involved only preserved the goods objects of transactions, without offering them on sale or placing them on the market, therefore not actively using the counterfeit trademark.

To clarify the notion, the Court provided as a benchmark the instance of a company that handles, on commission of a third party, the canning of beverages in cans bearing signs similar to a mark already registered.

In this case, the company executes a mere technical activity, having no interest in the external presentation of the cans and in the signs thereon. For this reason, the company in question doesn’t “use” the marks, but simply creates the technical conditions for the third party to use them.

Likewise, the company that carries exclusively the storage of the goods, like the companies of Amazon specifically used as warehouses of goods sold by third parties, doesn’t actively “use” such marks, for it doesn’t have as an aim to offer goods on the market, but it offers only a pure technical service (like the storage of goods) for the benefit of a third party seller.

In light of the above considerations, the CJEU therefore ruled in favor of the storage companies stating that “a person who, on behalf of a third party, stores goods which infringe trademark rights, without being aware of that infringement, must be regarded as not stocking those goods in order to offer them or put them on the market (…), if that person does not itself pursue those aims”, thus a violation of trademark law does not exist.