Amazon’s responsibility for storing third party products: Commentary on the ECJ judgment

14 April 2020

The mere fact of having products deposited or stored doesnot imply a use of a trademark. 

14 April 2020

The Court of Justice of the European Union (CJEU) recently had the opportunity to issue a preliminary ruling based on a question asked by the German Supreme Court for Civil and Criminal Matters.

Specifically, the German court consulted on the liability of a natural or legal person (in this case, Amazon) arising from the storage of a third party’s products, when they infringe trademark rights, and based on the premise that the potential liable party was unaware of the infringing nature of such goods.

Since these were infringements of EU trademarks, a correct interpretation of the current Art. 9.3 of Regulation 2017/1001, which establishes the right of a trademark owner to prohibit third parties from offering, marketing or stocking products for such purposes, in relation to EU trademarks identical and/or similar to his own, had to be made.

Thus, in its ruling, the CJEU states that ‘creating the technical conditions necessary for a sign to be used and obtaining remuneration for that service does not mean that the service provider himself uses the sign’.

In other words, the mere fact of having products deposited or stored does not imply a use of a trademark. In order to be considered trademark use, such storage must be for the purpose of offering or marketing the goods.

However, and rightly so, the CJEU opens up the possibility that “in theevent that the third party seller cannot be identified”, the person storing the products is considered to be doing so with the aim of offering them and selling them on the market; and, therefore, is carrying out the trademark infringements himself.

Taking into account the above, and beyond the possible responsibility that could fall on Amazon in the cases described here, we understand that various consequences can be derived from this.

On the one hand, although Amazon may not be responsible for the infringing trademark use of a third party’s products that it has in stock, it must in any case have a “commercial responsibility” for what it sells and stores.

This is because, despite the fact that Amazon works as a platform where third parties can offer their products and consumers can enter to buy them through that platform, it is still that entity the one that finally distributes those goods to the final consumer, obtaining a commission for each sale, whether or not it is infringing certain rights, and therefore obtaining a benefit from an illegal situation.

Consequently, and in order to protect both the final consumer and its own reputation in the market, it is necessary not only to maintain, but also to implement and execute optimal and effective channels of complaint through which the legitimate owners of the brands can show that their rights are being violated by the owners of the products stored by Amazon.  This way, the company could take appropriate legal actions against the seller, such as terminating their account in the event of a repeated offence, as well as removing links from the platform that lead to infringing products.

Thanks to the implementation and application of these complaint channels, this type of platforms will be able to protect both the rights of the brand owners, who are harmed in cases of offering and marketing possible counterfeits, and the consumers, who will have the guarantee of acquiring the goods they really want.

The fact is that we cannot ignore the fact that counterfeited products come from companies of dubious incorporation that do not usually comply with their legal obligations, neither to the State nor to their employees, and the goods they offer do not usually comply with labelling regulations nor do they pass any guarantee processes. This not only damages the rights and interests of trademark owners, who see third parties taking advantage of their reputation, investment and innovation to make an illegal profit from the marketing of products that infringe their registrations, but is also highly detrimental to consumers and society in general.

We will therefore be keeping a close eye on the final decision of the German Supreme Civil and Criminal Court, but we must not miss this opportunity to emphasise how important it is to have platforms that are free from counterfeiting, where there is a good control of their advertisers, and where the rights of the brand owners and the health and safety of consumers are defended, so that there is proper legal certainty in the market for everyone.

5/5 - (5 votes)

Rodrigo López Crespo

Asesor Jurídico. Departamento de Asesoría Jurídica.

Federico Jover

Abogado. Departamento de Propiedad Intelectual, Media & Entertainment.

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