Amazon goes from strength to strength

Amazon’s world just got better and better. Will anyone be brave enough to put a brake on its ‘knotwood like’ hold on the economy. Its reportedly generating squillions, pays little tax in comparison with its revenues and now its winning important cases which will increase its bottom line and make it even richer.

Coty Inc. is a German company and owns brands such as Davidoff which it distributes and licenses the Word Mark DAVIDOFF.

On 2 April 2020 the Court of Justice of the European Union (CJEU) delivered its preliminary ruling in Coty v Amazon. You can read the full case on the above link.

Coty and Amazon CJ

The legal issue

You will be aware of Amazon marketplace and its platform and how it utilises the “Fulfilment by Amazon” (FBA) service and its connected Amazon’s “Fulfilment Centres”.

Coty, had a problem with companies in the Amazon group offering for sale “Davidoff Hot Water” perfume. These were unauthorised. It commenced infringement proceedings against it and the German court asked the CJEU the following question as to whether an economic operator of a warehouse can be found liable for trade mark infringement without its knowledge or threat of sale.

The CJEU highlighted three main issues:

Those who store infringing goods, without being aware of that infringement that is no notice has been communicated and provided it has no intention to sell, do not stock those goods for the purposes of offering them for sale or putting them on the market under EU trade mark law.
To be successful a defendant must show some form of (a) active behaviour and (b) direct or indirect control of the act constituting use.
· EU law makes a distinction between (a) economic operators who import or send goods bearing registered trade marks to a warehouse and (b) warehouse owners who merely provide a storage service for goods bearing the registered trade mark.
The court held and gave the following ruling :

Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the [European Union] trade mark and Article 9(3)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark must be interpreted as meaning that a person who, on behalf of a third party, stores goods which infringe trade mark 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 for the purposes of those provisions, if that person does not itself pursue those aims.

The latter is NOT committing a tort and the former is.

About

Michael Coyle is a Solicitor Advocate and MD of Lawdit.

Lawdit is the owner of Trademarkroom.com and handles the firm’s oppositions when instructed by the team at Trademarkroom.com

He can be contacted at michael@trademarkroom.com or michael.coyle@lawdit.co.uk

Anna Orchard

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