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Amazon wins Landmark Trademark Law Dispute Over Perfumes Sold by Third Parties

Team SoOLEGAL 6 Apr 2020 3:43pm

Amazon wins Landmark Trademark Law Dispute Over Perfumes Sold by Third Parties

In a trademark dispute with the German wing of the international cosmetics giant Coty, the European Court of Justice (ECJ) ruled in favor of Amazon The court found that "the mere storage by Amazon, in the context of its online marketplace (‘Amazon- Marketplace’), of goods which infringe trademark rights does not constitute an infringement by Amazon of those trade mark rights.”

Coty Germany holds a license for the EU "Davidoff" trademark, which is a perfume brand. The issue arose when Coty Germany alleged that “two Amazon group companies infringed its rights in that mark by storing and dispatching bottles of ‘Davidoff Hot Water’ perfume offered for sale by third-party sellers on Amazon-Marketplace” without their permission. Coty Germany requested that the German courts allow “the two Amazon companies concerned to desist from such storage and dispatch.”

The Landgericht (Regional Court, Germany) dismissed Coty's action, and the dismissal was upheld by the appeals court. This time again Coty Germany took an appeal to the Bundesgerichtshof (Federal Court of Justice in Germany). The Bundesgerichtshof briefly suspended its proceedings in order to ask the ECJ "whether a company that stores products that infringe trademark rights on behalf of a third-party vendor, without being aware of the infringement, is itself using that mark."

The court ruled “in order for there to be an infringement of the rights in the trademark by the company providing the storage, that company must pursue, like the seller, the aim of offering the goods for sale or putting them on the market.” In this case, the Bundesgerichtshof has already decided unequivocally “that the two Amazon companies concerned have not themselves offered the goods for sale or put them on the market and that the third-party seller alone pursued that aim.” Having that in mind, the ECJ's decision will almost definitely mean the Bundesgerichtshof will also claim "that the Amazon companies did not use the Davidoff mark themselves."



Tagged: Amazon   landmark trademark   law dispute   European Court   Coty Germany   Davidoff   German courts  
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