In its ruling of April 2, 2020, the European Court of Justice (ECJ) decided by preliminary ruling that a company which stores and dispatches trademark infringing goods for a third party does not make its own use of the EU-trademark and is, therefore, not liable for the trademark infringement if it has no knowledge of the trademark infringement (printed in BeckRS 2020, 4826).

The ECJ's preliminary ruling was based on the following facts:

The cosmetics company Coty filed a claim against Amazon for infringement of the EUtrademark "Davidoff" and demanded an injunction regarding the possession and distribution of trademark-infringing perfumes. However, Amazon did not offer and distribute these perfumes as a seller, but took over the storage and dispatch of the goods for independent third party sellers (so called 3P-sellers) on the Amazon Marketplace platform (so-called fulfilled by Amazon or fbA-procedure).

The District Court of Munich I (LG München I) and the Higher Regional Court of Munich (OLG München) dismissed the action. In the opinion of both courts, the storage of goods for a third party shall not constitute own possession and the dispatch of the goods for a third party shall not constitute own distribution of Amazon. A liability based on the principles of the so called Störerhaftung (Breach of Duty of Care) of Amazon was ruled out, since Amazon could not be expected to proactively examine the large number of products in its warehouse for counterfeit characteristics, which were often only known to the manufacturer itself.

The Federal Court of Justice (BGH) suspended the proceedings in the appeal instance and referred the question to the ECJ for a preliminary ruling as to whether the so-called warehouse and carrier privilege also applies in cases in which the company is fully integrated into the operational process because the platform operator, stockist and sender all belong to the same group and only goods offered on the platform are stored and shipped (BGH GRUR 2018, 1059 – Davidoff Hot Water III). The BGH tended to apply the warehouse and carrier privilege (e.g. BGH GRUR 2009, 1142 – MP3-Player-Import) also to the present case, i.e. to deny liability for lack of own action.

In his opinion, the Advocate-General of the ECJ, however, affirmed an own obligation of Amazon: Amazon was actively involved in the distribution of the goods and - unlike a pure carrier - had its own economic interest in the sale (through the sales charges). The ECJ, nevertheless, finally decided the case differently: Only autonomous actions, with which the market player pursues own purposes of offering goods or placing them on the market, can be prohibited. Any possession and distribution must, therefore, be carried out for the company's own marketing purposes. In its decision, the ECJ left open the question of whether or not there might be a liability of Amazon based on the principles of the Störerhaftung, as this question was not part of the BGH's preliminary request. However, a liability based on the Störerhaftung regularly presupposes positive knowledge of the trademark infringement of the third party.

The decision of the ECJ and the legal view of the BGH expressed in its request are highlighting an established case-law which privileges trading platforms but holds strictly liable the 3Psellers operating on the platform. For example, 3P-sellers on Amazon's marketplace platform are liable for competition violations or trademark infringement if an offer in which they are listed as sellers has been modified by a third party (Amazon or other 3P-sellers) without their knowledge, since they would have to reckon with such manipulation at any time (see BGH GRUR 2016, 936 – Angebotsmanipulation bei Amazon [for trademark law] and BGH GRUR 2016, 961 – Herstellerpreisempfehlung bei Amazon [for competition law]). The BGH only set the limit of this liability in the case of customer reviews which were incorrect in content (BGH GRUR-RS 2020, 3414). The Federal Court of Justice justifies this very far-reaching liability of the 3P-sellers as the liability flip-side of the economic advantages of using an open and widereaching trading platform. In the opinion of the BGH, it does not matter that it is actually not possible for 3P-sellers to regularly check several thousand offers for (infringing) third-party insertions.

In the opinion of the author of this article, it is not comprehensible why these strict liability principles should not also apply to Amazon in regard to the fbA-procedure. Amazon profits directly from the offers of the 3P-sellers (through sales fees) and must reckon with the fact that trademark infringing goods are sold via the platform, as well. By handling the entire sales process, Amazon is actively involved in the trademark infringement. The fact that Amazon is hardly able to check the originality of the goods is, according to the above, not really a matter of importance.

Finally, it remains open whether the liability privilege also applies if the 3P-seller agrees to the mixing of stocks additionally to the fbA-procedure. In this variant of the fbA-procedure, the various stocks (from Amazon and other 3P-sellers) of a product are combined and the buyer is supplied from the nearest warehouse where the product is in stock. The retailer in realiter no longer holds a specific stock, but only a certain proportion of a total stock. Amazon selects independently and without instructions a product from the total stock, which the buyer receives. At least in this case, an active independent action by Amazon and thus liability in the case of a trademark infringement could be affirmed.