http://ipkitten.blogspot.com/2025/04/the-global-reach-of-trade-mark-law.html
Can a trade mark owner prevent an infringer from stocking the
infringing goods in a country, in which the trade mark is not protected,
if those goods are meant to be sold in the country of protection? This
question is at the heart of a reference for a preliminary ruling to the
Court of Justice of the EU (‘CJEU’) from the German Supreme Court
(discussed here): Tradeinn Retail Services (C-76/24).
The reference concerns the interpretation of Art. 10(3)(b) [Trade Mark Directive, (‘TMD’)],
according to which a trade mark owner may prevent a third party from
stocking infringing goods for the purposes of offering or putting them
on the market.
Advocate General (‘AG’) Spielmann recently published his Opinion in the case.
Background
The plaintiff owns German trade marks nos. 30426551 and 30426550 both
registered, inter alia, for ‘diving equipment, diving suits, diving
gloves, diving masks and breathing apparatus for diving’.
The defendant is domiciled in Spain and offered diving accessories, inter alia, on www.amazon.de
using the plaintiff’s trade marks. The defendant stored the goods in
Spain and shipped them to Germany. One of the offers concerned a trim
lead bag, which the plaintiff ordered as a test. The plaintiff’s trade
marks were used neither on the product nor its packaging.
The
plaintiff filed an infringement action before a German court requesting
the defendant to be ordered to cease and desist from using the
plaintiff’s trade marks for diving accessories in Germany, including
from possessing them for the purpose of offering or putting them on the
market.
The German Supreme Court’s request for a preliminary ruling
The German Supreme Court asked the CJEU the following questions:
1. Is a proprietor of a national trade mark under Article 10(3)(b) [TMD] allowed to prohibit a person in another country from stocking goods that infringe his or her trade mark for the purpose of offering those goods or putting them on the market in the country in which the trade mark is protected?
2. Does the concept of stocking within the meaning of Article 10(3)(b) [TMD] depend on the possibility of actually accessing goods in infringement of the trade mark or is the possibility of being able to influence the person with actual access to those goods sufficient?
The Advocate General’s Opinion
In his introductory remarks, AG Spielmann recalled that the national trade mark systems in the EU are meant to coexist with the EU trade mark system. He also explained that the effects of a trade mark are limited to the territory for which it is protected and that national law can provide relief only in respect of acts performed in the national territory of protection.
First question
Turning to the first question, the AG summarized several decisions from the CJEU dealing with infringements committed from abroad but targeting consumers in the EU.
AG Spielmann relied, inter alia, on L’Oréal and Others (C‑324/09), where the CJEU found that trade mark infringement exists even if the infringing act (such as operating an online shop) is committed outside the EU but targets consumers in the EU.
The AG also considered that an offer of goods in the EU is infringing even if the goods are not (yet) in the EU (Class International, C‑405/03).
AG Spielmann concluded from this line of case law that the essential element for finding an infringement is whether the contested use targets consumers in the territory for which the trade mark is protected.
Further, the effectiveness of Art. 10(3)(b) TMR would be undermined if the defendant could simply stock the goods abroad while still intending to offer them or putting them on the market in the territory of protection.
The AG concluded that
Article 10(3)(b) [TMD] must therefore be interpreted as meaning that it ensures the protection of a national trade mark against the stocking outside the territory in which it is protected of a product that infringes the rights in that trade mark, where the product is stocked for the purpose of being offered or put on the market in the country in which the trade mark is protected.
He deemed this to be compatible with the territoriality principle because there is a relevant connecting factor, namely the targeting of consumers in the territory of protection.
Second question
As regards the interpretation of the term ‘stocking’ in Art. 10(3)(b) TMD, the AG made it clear that the German concepts of property law are irrelevant. The provision does not refer to national law, meaning that it must be interpreted autonomously and uniformly throughout the EU.
AG Spielmann drew on various CJEU judgments dealing with the concept of ‘use’ (inter alia Daimler (C‑179/15)), which requires active behaviour and direct or indirect control of the act constituting the use. The trade mark owner may take action against any third party who has direct or indirect control of the infringing act and is, therefore, effectively able to stop the use.
Particularly with respect to the stocking of goods, the AG referred to TOP Logistics and Others (C‑379/14), where the CJEU held that a warehouse keeper, who merely keeps goods for a third party, does not make ‘use’ of the sign on the goods. In contrast, an economic operator who sends goods bearing a trade mark to a warehouse keeper to have them stored with a view to releasing them for marketing can be liable for trade mark infringement. That economic operator may be classified as a ‘[stocker] for those purposes’ within the meaning of Art. 10(3)(b) TMD.
AG Spielmann concluded that a trade mark owner may take action against a third party having direct or indirect control over the stocking of the goods, provided that they are stocked for the purpose of offering them or putting them on the market in the territory in which the trade mark is protected, or has them stocked on their account for those purposes by another person and has decisive influence over that person, in that that third party may decide, even indirectly, on the destination of those goods.
Comment
If adopted by the CJEU, the AG’s Opinion would strengthen the rights of trade mark owners and would be a consistent continuation of CJEU case law on trade mark infringements from abroad. As long as the goods are meant for consumers in the territory of protection, it does not matter where the seller is domiciled, the goods are stored or the website on which the goods are offered is hosted.
A question that AG Spielmann and the CJEU will not have to answer is how easy it will be for the defendant to comply with a judgment prohibiting the stocking of goods abroad for the purpose of selling them in Germany. Since a purpose is a subjective condition, is it sufficient for the defendant to simply change its mind about the purpose of the stocked goods? Or does the changed purpose have to be manifested in an objective way?
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