28 April


E-commerce platforms are not responsible for the sole storage of counterfeit goods


A company that manages an online marketplace cannot be held responsible for the sole fact of storing the products of third-party retailers in its own warehouses that bear counterfeit trademarks. This was established by the EU Court of Justice in the proceedings that involved a German company that owns a well-known perfume brand and two companies of the Amazon group, as regards the hypothesis that subjects unaware that they store products in their warehouses on behalf of a third party that violate a trademark are making "use" of the trademark in a manner prohibited under European legislation. The Court assessed the applicability of Art. 9 of Reg. 207/2009 (replaced by Reg. 1001/2017), which states that the trademark owner has the right to prohibit others from "offering the goods, putting them on the market or stocking them for those purposes" in the event that only the third party proposes to sell or market these products. This clarifies that the concept of unlawful "use" of a trademark of others implies active conduct and direct or indirect control over the act constituting such "use", such that only those who perform the act are actually capable of ceasing it.

On this basis, the Judges declared that if is true that an economic operator who "uses" a sign identical to a trademark by importing or placing goods in storage that bear a trademark that it does not own for the purpose of sale, then the operator who stores them must personally pursue the purposes of offering the products stored for sale or putting them on the market in order for storage to be qualified as "use" of identical or similar trademarks. Consequently, the aforementioned rules must be interpreted as meaning that a person who holds products on behalf of a third party that infringe a trademark and is not aware of such infringement, must be deemed not to store these products for the purpose of their sale or placement on the market pursuant to the aforementioned provisions, if said person does not pursue the above purposes.

Lastly, it is interesting to note that the Court has left a potential liability for managers of online marketplaces as regards laws that differ from those mentioned above, namely with reference to the provisions on the liability of hosting providers pursuant to Art. 14 of Dir. 2000/31, as proposed by the company that owns the trademark subject to counterfeiting. However, the Court limited itself to acknowledging that it was unable to rule on the matter, as it was only able to examine the questions for a preliminary ruling by the national court, which had not raised this issue  (EU Court of Justice, judgement of 2 April 2020, in case C-567/18).