The Federal Court of Justice (BGH) has ruled in the long-running case of Coty’s Davidoff perfume against Amazon: the storage of goods for Amazon is not a trademark infringement – but Amazon Luxembourg has inspection duties as disturber and an obligation to provide information regarding the infringers.
That especially brand manufacturers increasingly try to prevent the sale of unauthorized or counterfeit products via Amazon is well known. This was also the case of Davidoff Hot Water IV of the plaintiff Coty (USA), which has now been decided by the BGH (I ZR 20/17). Coty had established through its own test purchases that a third party was selling this brand perfume via Amazon Marketplace, but that it was not exhausted goods. Coty sent a reminder and the third party also issued a cease-and-desist declaration, so everything had been clarified between these parties so far.
But to what extent was Amazon also legally responsible for trademark infringements via the sales platform?
If a third party stores goods protected by trademark law as part of Amazon shipping, there is no trademark infringement in the mere storage – as long as the third party does not sell the goods. This ruling – as part of this case – was made by the ECJ last year, and in fact this had been expected. This is because the ruling confirmed the well-known legal principle in trademark law that what matters is not mere possession, but whether a sales purpose is being pursued.
However, the question of whether Amazon itself is to be regarded as a trademark infringer if counterfeit products are shipped by third parties via the Amazon platform in the “Amazon Marketplace” area with the note “Shipping by Amazon” with Amazon’s knowledge, this question was not examined by the ECJ.
BGH Judgment ‘ Davidoff Hot Water IV ‘
The BGH had itself asked the ECJ to clarify these issues, and so the German Federal Court also referred directly to it in its “Davidoff Hot Water IV” ruling.
No self-distribution by the German Amazon warehouse
The defendants in this case both belong to the Amazon group: one defendant is located in Graben (Germany) and operates an Amazon warehouse there. This defendant was acquitted by the BGH: it could neither be considered a trademark infringer nor could injunctive relief be sought against it. The BGH ruled that the “Amazon Marketplace” offer would result in purchase contracts between buyers and third-party sellers, so that – contrary to the opinion of the plaintiff Coty – there was no de facto self-distribution by the defendant with the Amazon warehouse.
Amazon Luxembourg – European headquarter of Amazon
However, the BGH took a different view with regard to the second Amazon defendant, namely Amazon Luxembourg, the European administrative headquarters of the group. It is true that Amazon Luxembourg is not to be obliged to cease and desist as a perpetrator or participant in a trademark infringement.
However, the BGH ruled that Amazon Luxembourg was certainly liable as disturber, thus contradicting the court of appeal of the previous instance. The BGH explained that the duty of a person held liable as disturber is determined by whether he or she can reasonably be expected to carry out an examination as individual case. In this context, it is relevant whether the possible infringement of the rights of a third party can only be determined after a factual or even a detailed legal examination – or whether the infringement is obvious and easily recognizable.
Since Coty had sent Amazon a notice about the person of the infringer, the name of the offending products and the reason for the complaint, Amazon was in a position to obtain information about the origin of the goods on the basis of the plaintiff’s notice by inquiring with the seller. The effort required would only have been minimal and not overbearing from the outset, the court found. It was in no way necessary, the BGH explained, for Amazon to check the plaintiff’s allegation of “non-exhausted goods”; it was only a matter of checking the proof of origin for the offending goods.
The BGH also upheld plaintiff Coty in a second aspect. When, after the test purchase, Coty demanded from Amazon the transfer of all stocks of Davidoff perfume from Amazon Marketplace, Amazon sent 30 pieces – but eleven of the 30 pieces sent were counterfeit products and came from the stock of another, further seller. Coty demanded information from Amazon about the identity of this other seller, but Amazon refused.
Obligation to provide information for Amazon Luxembourg
The BGH ruled against Amazon Luxembourg on this issue. German substantive law is applicable to the duty of disclosure of the Luxembourg-based defendant Amazon, the court stated, because claims for information due to infringement of an EU trademark are subject to the law of the state in which the infringement was committed, according to Art. 101(2) UMV, Art. 8(2) Rome II Regulation.
Therefore, in this case, there is an obligation to provide information pursuant to § 19 (1) German Trademark Act, and accordingly, the requirements of exhaustion are not met. Instead, the BGH ruled, the infringer can be claimed for immediate information about the origin and the distribution channel of illegally marked goods or services. The court specified that the trademark owner could demand that the alleged infringer produce a document or inspect an object – if this is necessary to substantiate his claims.
Amazon Luxembourg had, if applicable, to a considerable extent enabled trade in non-exhausted goods marked with the trademark in suit, the BGH added. The communication of characteristics (Coty’s demand from Amazon to hand over the manufacturing numbers of all perfumes “Davidoff Hot Water EdT 60 ml” in relation to the shipment reference of the trademark infringing goods) of the goods located at Amazon is a minus compared to the inspection and therefore covered by the claim under $ 19a (1) MarkenG, the BGH ruled and also formulated this as a leading decision.
Finally, the BGH set aside the judgment of the Court of Appeal (OLG München, decision of 29.09.2016 – 29 U 745/16) insofar as the Court of Appeal ruled on claims I and II with regard to the first defendant to the detriment of the plaintiff (§ 562 (1) ZPO).
Nevertheless, the BGH referred the case back there once again, because the court of appeal must decide on the costs of the appeal.
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