The case of Coty Germany GmbH v Amazon Services Europe Sàrl concerned the sale of knock-off Davidoff perfume on Amazon. The claimant, Coty, owns the rights to distribute Davidoff perfumes in the EU under the registered trademark (EUTM 876874). After a number of test purchases on the Amazon platform for Davidoff perfumes sold by third parties, with orders being fulfilled by Amazon, Coty pursued the platform itself due to the infringement of the trademark by the third-party sellers. Coty pursued an order that third-party sellers, and Amazon, would not be able to stock the knockoff Davidoff goods - with the matter ultimately ending up with the CJEU through the German courts.
The CJEU only had to look at one question, which asked "...whether Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001 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 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". In essence, the question concerns liability for the proprietor over the sale of goods on an online marketplace, like Amazon.
As a part of the prohibitions under Article 9(3)(b), a third-party is prevented from offering trademark protected goods, putting them on the market or stocking them. This could include the proprietors of online marketplaces if they are seen to be doing this through the offering of goods on their website by third-party sellers.
As a part of the platform's service, Amazon stored the goods of third-party sellers, including the counterfeit perfume, which are sold on the platform and processed by Amazon after sale. The Court therefore had to determine whether such a storage operation may be regarded as 'using' or 'stocking' the trademark goods under the above Regulations.
According to case law, 'using' a trademark entails active behavior and direct or indirect control of the act constituting the use, which includes the activities under Article 9 of the Regulations. However, the prohibitions only apply to third-parties that have direct or indirect control of the act constituting the use, and can therefore comply with those prohibitions.
Also, the Court noted that operators of e-commerce platforms are not using trademarks in relation to goods sold by sellers on that platform, and the ultimate 'user' of the trademarks is the seller. Similarly, any warehouse-keeper who is sent goods to be held for sale does not use the trademarks contained in those goods.
Following an extensive discussion of the above precedent and other cases, the Court determined that "...in order for the storage of goods bearing signs identical, or similar to trade marks to be classified as ‘using’ those signs, it is also necessary... for the economic operator providing the storage itself to pursue the aim... which is offering the goods or putting them on the market". In essence this means that requires Amazon, or other similar operators, to actively offering goods they hold for sale, and not simply allowing for third parties to do so using their platform (and their logistics facilities).
This led the Court to conclude that Amazon was not using the trademarks when third parties sold goods through their platform.
The Court then summarized the matter as "...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 decision makes perfect sense, since Amazon, or any other similar operator, is not actively selling any counterfeit goods on their platform, but merely enable third parties to be doing so. To conclude that the marketplaces themselves would be liable would hinder their effective operation, and potentially cause them to be liable for 'actions' that they have not taken; namely selling goods unknowingly that are counterfeit. The decision does, however, put them on notice, and ensures that marketplaces that do indeed actively sell counterfeit goods can still be pursued for trademark infringement in that event.