The matter at hand

In 2014, Coty, a perfume distributor and licensee of the trade mark DAVIDOFF, purchased a bottle of ‘Davidoff Hot Water’, that was offered for sale on Amazon by a third-party seller. The third party seller subsequently signed a cease-and-desist declaration, after Coty had argued that the relevant goods had not been put on the market in the EU by the trade mark proprietor or with its consent, so that the trade mark rights were not exhausted. Taking the view that Amazon itself had also infringed the DAVIDOFF trade mark by storing these goods, Coty subsequently commenced litigation against Amazon.

In supreme court appeal, the Bundesgerichtshof (Federal Court of Justice, Germany) held that Amazon had stored the goods, but on behalf of a third party, without itself having knowledge of an infringement and without pursuing the aims of itself offering them or putting them on the market. The Bundesgerichtshof raised a preliminary question before the ECJ, asking whether Article 9(3)(b) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark and equivalent articles need to be interpreted as such, that Amazon, under these circumstances, had infringed the DAVIDOFF trade mark.

The judgment of the ECJ

The ECJ first reiterates several of its earlier findings regarding the questions of when a third party is to be considered to have ‘used’ a trade mark in the sense of Article 9(3)(b) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark and equivalent articles. Most notably, it refers to its earlier findings that “the expression ‘using’ involves active behaviour and direct or indirect control of the act constituting the use” (paragraph 37) and that ‘use’ “implies, at the very least, that that third party uses the sign in its own commercial communication” (paragraph 39).

Moreover, the ECJ reiterates its earlier findings in L’Oréal v eBay (C-324/09) that, “as regards the operation of an e-commerce platform, […] the use of signs […] in offers for sale displayed in an online marketplace is made by the sellers who are customers of the operator of that marketplace and not by that operator itself” (paragraph 41).

The ECJ then refers to the wording of Article 9(3)(b) of Trade Mark Regulation 2017/1001Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark and equivalent articles, by considering that “that provision relates specifically to the offering of goods, their being put on the market, their being stocked ‘for those purposes’ or the supply of services under the sign concerned” (paragraph 44). It is concluded on this basis that “in order for the storage of goods bearing signs […]to be classified as ‘using’ those signs, it is also necessary […] for the economic operator providing the storage itself to pursue the aim referred to by those provisions, which is offering the goods or putting them on the market.” (paragraph 45).

Applied to the present case, the ECJ concludes that Amazon does not use the sign in their own commercial communication (paragraph 48).