{"id":10429,"date":"2020-06-25T17:32:38","date_gmt":"2020-06-25T15:32:38","guid":{"rendered":"https:\/\/dev.andersen.dotandmedia.com\/the-coty-vs-amazon-case-and-the-use-of-trademarks\/"},"modified":"2024-02-15T17:54:18","modified_gmt":"2024-02-15T16:54:18","slug":"the-coty-vs-amazon-case-and-the-use-of-trademarks","status":"publish","type":"post","link":"https:\/\/dev.andersen.dotandmedia.com\/en\/the-coty-vs-amazon-case-and-the-use-of-trademarks\/","title":{"rendered":"The Coty vs Amazon case and the use of trademarks"},"content":{"rendered":"

The Court of Justice of the European Union resolved the case known as \u201cCoty Germany GmbH vs\u00a0Amazon<\/strong><\/em>\u201c[1]\u00a0with the sentence of 2 April 2020 (C-567\/18) and gave a preliminary ruling in favor of the e-Commerce giant regarding the interpretation of a provision of the EU Trademark Regulation. The ruling was returned to the German Federal Court of Justice (Bundesgerichtshof<\/em>) and it states that mere storage or stocking activity cannot be deemed as \u201cuse\u201d of those trademarks which are put on the stocked or stored goods. Therefore such an activity alone does not infringe the exclusive right to trademark: a more specific purpose is needed, the purpose of offering or placing such goods on the market.<\/p>\n

As for the case background, Coty Germany GmbH, a German company supplier of luxury goods (particularly perfumes and cosmetics) and owner of the related brands, having through a \u201cmystery shopper\u201d purchased their own goods on Amazon, found out that unauthorized vendors were unlawfully trading such goods by availing of the stocking service \u201cFulfilment by Amazon\u201d. Such trading activity was allegedly unlawful as the related trademark rights had not yet been exhausted (hereinafter the \u201cinfringed trademark\u201d). Coty requested that the vendors to refrain from trading the goods marked with the infringed trademark (hereinafter the \u201cGoods\u201d) and asked Amazon to hand all Goods in stock over to them (Coty). Both the vendors and Amazon conformed to the requests but Amazon informed Coty Germany that part of the products in the warehouse were stored on behalf of \u201cfourth\u201d parties to which it was not possible to trace. Facing the impossibility to trace the unknown vendor, Coty sued Amazon itself, whose stocking service, according to Coty, had to be considered as illicit, pursuant to the EU Trademark Regulation and that Amazon completely replaces the seller in the advertisement phase and then also in the phase of implementation of the contract.<\/p>\n

Therefore, under the interpretation of the EU Law examined by the ECJ, the question was raised as to whether the service called \u201cFulfilment by Amazon\u201d could be considered as \u201cuse<\/strong>\u201d of the infringed trademark and particularly if the notion of \u201cstocking<\/strong>\u201d of Goods could be interpreted as covering the commercial scheme above,\u00a0 pursuant to article 9 of Regulation No 207\/2009 and article 9 of Regulation No 1001\/2017 (the latter replacing the former without substantial change).<\/p>\n

The ECJ by looking through its relevant case law, notes, among others, the following points:<\/p>\n