The CJEU to look at the question of: “When are infringing goods being ‘offered’?” over the Davidoff Hot Water fragrance

The well-known brand of Davidoff has released a fragrance by the name of “HOT WATER”. The name of the perfume- DAVIDOFF HOT WATER is an already registered EU trade mark. In the interest of business, Coty is the exclusive licensee and as such, is permitted to distribute the product in Germany.

An earlier dispute in 2015 saw Coty successfully extracting information relating to an infringing party’s name and address from a German bank, as the CJEU passed a judgment that saw privacy laws bending the knee to a trade mark owner’s right of protection.

This time, Coty were conducting a test purchase of a perfume bearing the name: “Davidoff Hot Water EdT 60ml” from the online Amazon Marketplace. The test purchase was discovered to be a parallel import, which are non-counterfeit products that were imported from another country. In this case, the importing country was outside the EU. Hence, due to lack of exhaustion of the right within the EU, the selling of such products is deemed an infringement, as it lacks the right owner’s consent.

The seller of these infringing products used Amazon’s ‘Fulfilment by Amazon’ option, with the description reading as follows:

“With Fulfillment by Amazon (FBA), you store your products in Amazon’s fulfillment centers, and we pick, pack, ship, and provide customer service for these products.”

Coty asked Amazon to cease and desist of owning or shipping DAVIDOFF HOT WATER fragrances for the purpose of putting them on the market, seeing as how the product had not been exhausted in the European market. Amazon denied any liability, pointing out that it merely stored the perfumes for third party sellers and was not using the trade mark itself in any way. Arguing further, that it would also not be held liable for aiding and abetting the infringing sellers, since Amazon had no knowledge of the infringing nature of the products. On that point, it was found that Coty never informed Amazon about the products in the sense of a ‘takedown notice’ before sending the cease and desist.

The German courts of first and second instance dismissed Coty’s claims. It was held, Amazon did not stock the perfumes for the purpose of offering or putting the goods on the market. Thus, Amazon’s actions and obligations under their “Fulfillment by Amazon” policy could not be considered a prohibited act under Article 9(3) (b) of the Regulation of the European Union trade mark ((EU) 2017/1001).

This case has opened the broader question of Amazon’s “Fulfillment by Amazon” policy and how it can potentially be used by third party sellers to market infringing products. Observing this, the German courts stayed the proceedings and referred the case to the CJEU.

Its’ decision may see Amazon reword their policy, and provide more guidance as to what exactly consists “offering and stocking goods for the purpose of putting them on the market”.

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