The Court of Justice of the European Union (CJEU) has held that stocking or possession of infringing goods in an EU state can infringe a trade mark in another EU state where the stocking is for the purpose of supply to that second state and the person supplying or intending to supply customers in that second state (where the trade mark is held) has "control or direction over the person who has direct and actual control over those goods"(Tradeinn Retail v PH (C-76/24)). The decision significantly strengthens a trade mark owners' position when trying to prevent the sale of infringing goods in a territory where they have trade mark registered which are being sourced from an EU territory where they do not have such protection.
Background
In the main proceedings, the dispute arose over the use of two signs by Spanish company Tradeinn on diving accessories which were advertised and offered on its website and Amazon.de and which signs were identical to two trade marks held by PH registered in Germany for similar products. As Tradeinn partially acknowledged these claims, the Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth) ordered Tradeinn to cease offering or promoting those products. On appeal, this was extended to include a prohibition on "distributing or stocking" the goods for the purpose of offering them in Germany, even though the goods were being held in Spain.
Challenging this extension, Tradeinn appealed to the German Federal Court of Justice, which referred two questions to the CJEU.
The first question asked whether, under Article 10(3)(b) of Directive 2015/2436 of 16 December 2015 to approximate the laws of the Member States relating to trade marksand the principle of territoriality, a proprietor of a registered trade mark in one EU Member State can prohibit a third party from stocking goods bearing an identical sign in another EU Member State if those goods are intended for offer in the former Member State.
The second question asked whether the verb "to stock" in the German language version of Article 10(3)(b) must be interpreted to mean that the third party must have direct control or access over the goods, or if it is sufficient for them to be able to influence the person who has such control or access.
Decision of the CJEU
On the first question, the CJEU held that Article 10(3)(b)
"must be interpreted as meaning that the proprietor of a trade mark protected in one Member State may prohibit a third party from stocking, in the territory of another Member State, goods under a sign in the circumstances referred to in Article 10(2) of that directive in order to offer those goods for sale or to put them on the market in the Member State in which that mark is protected."
In concluding this, the CJEU emphasised the importance of the factual context and moreover that the third party in question must themselves pursue offering the infringing goods on the market, citing the decision in Coty Germany (C-567/18).
Further, the CJEU confirmed that online advertisement or offering of potentially infringing goods must be targeted at consumers in the country where the trade mark is registered. With reference to L'Oreal and Others(C-324/09), the Court reiterated that simply advertising products for sale on a website that is accessible in the Member State in which the trade mark concerned is protected is not sufficient to show the goods are being offered for sale in that Member State.
On the second question, the CJEU concluded that Article 10(3)(b)
"must be interpreted as meaning that in order to 'stock', within the meaning of that provision, goods under a sign in the circumstances referred to in Article 10(2) of that directive, it is sufficient to have control or direction over the person who has direct and actual control over those goods."
The decision will assist trade mark proprietors seeking to prevent the storage of infringing goods intended for markets where they have trade mark protection, by providing for injunctions against the person(s) controlling the stocking from the state where the trade mark is held. The extent of control and purpose required is such that simply holding goods that would be infringing if held in a state where there was trade mark protection will not be enough. They must be held for the purpose of supply into that state where the trade mark infringement is alleged and the party to be injuncted must have sufficient ultimate control over the entity stocking the goods.
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