On August 7, 2025, the Higher Regional Court of Düsseldorf (Second Chamber) delivered a significant judgment in Case 20 U 9/25 between a German sportswear manufacturer and a logistics service provider. The decision provides important clarification on the secondary liability of logistics companies that facilitate direct shipments from China to EU end customers, particularly regarding monitoring duties if such business models create structural trademark infringement risks.
1. Key takeaways for logistics service providers
- Providing a German address for returns to enable direct shipping from China constitutes adequately causal contribution to infringement
- Business models with structural infringement risks trigger heightened monitoring duties after notice
- Branded goods in single packages from China are inevitably non-exhausted and therefore infringing
- Service providers must implement reasonable preventive measures such as sender verification in advance
- Lack of physical possession does not exempt service providers from liability if the service enables market access
2. Background of the case
The case concerned a leading global sportswear manufacturer and proprietor of EU trademarks for clothing. The trademark owner challenged a German logistics service provider whose business model consisted of providing German addresses to Chinese logistics companies for postal dispatch and acting as a return address for undeliverable goods.
The defendant's service enabled single-item shipments directly from China to German end customers – a critical component as the German logistics company DHL requires a German postal address for domestic shipping. Through test purchases in the fall of 2023 and May 2024, the trademark owner discovered counterfeit football jerseys bearing its trademarks shipped from Chinese online shops, with the defendant consistently listed as sender. After the defendant ignored a cease-and-desist letter dated January 15, 2024, the trademark owner obtained a preliminary injunction on June 12, 2024.
3. Analysis of the court's decision
3.1. The defendant's arguments
The defendant contended it should not be held liable as a secondary infringer for two main reasons:
No adequately causal contribution
The defendant argued that merely permitting the use of its address did not constitute adequately causal contribution since: (i) successfully delivered packages reached customers without the defendant gaining possession, (ii) trademark infringement was already completed upon entry into the EU before a handover to DHL, and (iii) even for returns, its provision for renewed delivery could be disregarded without affecting entry into the EEA. The core argument was that "no possession = no influence = no causality".
No unreasonable monitoring duties
Drawing on established secondary liability principles, the defendant argued it was not subject to proactive monitoring duties, could not be obligated to do what was technically and/or economically unreasonable, had no access to successfully delivered goods, and that comprehensive controls would make its business unprofitable while disproportionately impeding efficient goods traffic.
3.2. The court's analysis
The court rejected these arguments and confirmed the preliminary injunction.
Particular danger of the business model
The court found that the defendant's business model created a structural trademark infringement risk. By enabling direct shipments from China with pre-cleared customs, the service minimized customs control risk. Crucially, the court held that any branded goods in single packages shipped directly from China to end customers are inevitably infringing due to a lack of exhaustion under Article 15(1) EUTMR. Genuine branded goods are shipped in containers to brand owners or distributors – never directly to end customers. No brand owner permits Chinese online retailers to ship directly to EU consumers because different price levels require different distribution channels. This means: shipments in single packages are either counterfeits or non-exhausted branded goods.
Willful and adequately causal contribution
The court traced the causation chain: DHL requires German sender addresses for returns, meaning that, without the defendant's address, DHL would not accept packages, meaning that, without DHL's acceptance, shipping from China would be pointless, while no logistics company ships goods to strand at airports. Therefore, without the defendant's service, packages would not enter the internal market at all. This constituted a conditio-sine-qua-non. The lack of physical possession was irrelevant; what mattered was that the defendant enabled the entire supply chain.
Reasonable monitoring duties
After notice of the trademark owner, the defendant had a duty to prevent further similar infringements. The court declined to prescribe specific measures, stating: "Which measure the defendant takes is up to them." However, it indicated reasonable measures included:
- Electronic transmission and verification of supplier names in advance through simple internet research (e.g., Google image search)
- Blocking shipments from identified problematic suppliers or rerouting certain packages to a warehouse for inspection
- Implementation of notice-and-staydown procedures
The court emphasized that these measures would not fundamentally impair the defendant's business model and were proportionate, given the high significance of infringements, easy recognition (branded goods from China equals non-exhausted), and simple technical implementation.
4. Implications for logistics service providers
The decision confirms that logistics service providers facilitating China-to-EU direct shipping cannot rely on general exemption from monitoring duties based on a lack of possession. The business model of providing German postal addresses for Chinese shippers is only permissible with compliance measures.
5. Conclusion
The judgment represents a significant evolution in secondary liability for cross-border ecommerce logistics. It recognizes that business models systematically enabling IP infringements cannot hide behind lack of possession arguments.
Last but not least: the court clarified that single packages from China are always considered to be trademark infringement, which will certainly have a significant impact on border seizure proceedings as well.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
