OPINION OF ADVOCATE GENERAL

CAMPOS SÁNCHEZ-BORDONA

delivered on 28 November 2019 ( 1 )

Case C‑567/18

Coty Germany GmbH

v

Amazon Services Europe Sàrl,

Amazon FC Graben GmbH,

Amazon Europe Core Sàrl,

Amazon EU Sàrl

(Request for a preliminary ruling from the Bundesgerichtshof

(Federal Court of Justice, Germany))

(Reference for a preliminary ruling – EU trade mark – Effects of the trade mark – Rights conferred by the trade mark – Right to prohibit any third party from storing goods for the purposes of offering them or putting them on the market – Storage of goods by a third party who is unaware of the infringement of trade mark rights)

1. In the judgment in Coty Germany, ( 2 ) the Court of Justice dealt with one of the issues raised by ‘third-party platforms for the online sale of [luxury] goods’ in the context of a selective distribution system. What the Court found in that case was that the prohibition on the use of such platforms (or of third-party undertakings for online sales), which had been imposed on the authorised distributors of certain cosmetics in order to preserve the luxury image of those goods, was valid.

2. The same undertaking which had originally initiated those proceedings (Coty Germany GmbH) has brought another action affecting the activities of e-commerce platforms before the German courts, more specifically, one of the most well-known: Amazon. In its view, certain Amazon group undertakings have infringed the right of an EU trade mark proprietor to prohibit third parties from using that sign. ( 3 ) The infringement is said to have taken the form of the intervention by those undertakings, without authorisation from the proprietor, in the sale of a perfume protected by the trade mark of which Coty Germany is a licensee.

3. The Bundesgerichtshof (Federal Court of Justice, Germany), to which it ultimately falls to settle the dispute following the judgments of a court of first instance and a court of appeal respectively, has raised its uncertainty as to the interpretation of Article 9(2) of Regulation (EC) No 207/2009, ( 4 ) which defines the rights of an EU trade mark proprietor, ( 5 ) with the Court of Justice.

I. Legislative framework. Regulation (EU) 2017/1001 ( 6 )

4. Regulation 2017/1001 codified and replaced Regulation No 207/2009, which was applicable at the time when the facts of the dispute arose. The referring court mentions both, highlighting the fact that, given the nature of the proceedings instituted, the applicable regulation is that which is in force now. In any event, the provision relevant to this case ( 7 ) has remained substantially unchanged in the transition from one regulation to the other.

5. Article 9 (‘Rights conferred by an EU trade mark’) provides: ‘1. The registration of an EU trade mark shall confer on the proprietor exclusive rights therein. 2. Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where: (a) the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered; … 3. The following, in particular, may be prohibited under paragraph 2: … (b) offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder; …’.

II. Facts of the dispute, procedure before the national courts and question referred for a preliminary ruling

6. Coty Germany, which sells cosmetic products in Germany, is the proprietor of a licence for the ‘DAVIDOFF’ EU trade mark for ‘perfumery, essential oils and cosmetics’. As licensee, it has the power (conferred by the undertaking that owns the trade mark registration) to exercise in its own name the rights arising from that sign.

7. Amazon Services Europe Sàrl (‘Amazon Services’), established in Luxembourg, enables third-party sellers to publish offerings of their goods on the amazon.de website. Contracts for the purchase and sale of goods put on the market in this way are concluded between third-party sellers and purchasers.

8. Sellers can participate in the ‘Fulfilment by Amazon’ program, ( 8 ) whereby fulfilment centres operated by Amazon group undertakings store goods, dispatch them to purchasers and offer other additional services.

9. On 8 May 2014, a test buyer working for Coty Germany purchased from the amazon.de website the ‘Davidoff Hot Water EdT 60 ml’ perfume being offered by Ms OE (‘the seller’) under the label ‘Versand durch Amazon’ (‘Fulfilment by Amazon’), the seller having signed up to that program.

10. Amazon Services had commissioned Amazon FC Graben GmbH (‘Amazon FC’), an undertaking within the same group that operates a fulfilment centre (warehouse) and is established in Graben, Germany, to store the seller’s goods.

11. When it found out about the sale of those goods, Coty Germany ordered the seller to cease her offering on the ground that the trade mark rights in the perfume were not exhausted. In response, the seller issued a prohibitory injunction combined with a penalty clause applicable in the event of non-compliance.

12. By letter of 2 June 2014, Coty Germany requested Amazon Services to return all of the seller’s ‘Davidoff Hot Water EdT 60 ml’ perfumes. Amazon Services sent Coty Germany a parcel containing 30 units of that perfume. Having learned from another Amazon group undertaking that 11 of those units had come from a different seller’s stock, Coty Germany asked Amazon Services to provide it with the name and address of the other seller, and explained that, of the 30 perfumes it had received, 29 were goods for which the trade mark rights had not been exhausted. Amazon Services informed Coty Germany that the undertaking from whose stock the aforementioned 11 units had come could not be determined.

13. Taking the view that the conduct of Amazon Services and Amazon FC infringed its trade mark rights, Coty Germany brought an action for an injunction prohibiting both undertakings from continuing to stock or dispatch perfumes under the ‘Davidoff Hot Water’ trade mark for the purposes of putting them on the market (or for the purposes of their being put on the market by third parties, as the case may be) in the course of trade in Germany.

14. The action for a prohibitory injunction concerned goods not put on the market by the trade mark proprietor or by third parties with the proprietor’s consent in national territory and in any other Member State of the European Union or party to the Agreement on the European Economic Area. ( 9 ) That action came with a claim for damages (the compensation sought being EUR 1 973.90, plus interest at 5% from 24 October 2014).

15. Both the judgment at first instance and the judgment on appeal ( 10 ) dismissed Coty Germany’s claims. The appeal court held in particular that: – Amazon FC had not made use of the trade mark at issue and had not held the perfumes in its possession for the purposes of offering them or putting them on the market, but had simply stored them for the seller. It could not therefore be regarded as the perpetrator of an infringement or be compelled to discontinue its conduct in connection with the perfumes in question. As it was not apparent that Amazon FC had had any knowledge of the fact that the trade mark rights for the product were not exhausted, it could not be held liable as co-perpetrator of, or accomplice in, an infringement of those rights. – Amazon Services was to be exonerated in particular on the ground that the seller’s merchandise had not been in its possession and it had not sent the goods at issue to the seller’s buyers.

16. In the appeal on a point of law (Revision) against that judgment before the Bundesgerichtshof (Federal Court of Justice), that court states that since Coty Germany brought an action for a prohibitory injunction, which presupposes that there is a risk of repetition, the appeal will be well founded only if the defendants’ actions were capable of constituting an infringement both at the time when they took place and at the time that judgment is given on appeal.

17. Now, the referring court needs to ascertain whether, in the light of Article 9(3)(b) of Regulation 2017/1001, a person who stores goods that infringe a trade mark right without having any knowledge of that infringement holds them in his possession for the purposes of offering them or putting them on the market, in the event that it is not that person himself but a third party who seeks to offer them or sell them.

18. In the view of the referring court, that point of uncertainty warrants an answer in the negative, since: – According to its own case-law relating to patents, the mere holding or transportation of goods that infringe patent rights by a warehouse keeper, carrier or freight forwarder [does not] generally take place for the purposes of offering them or putting them on the market. ( 11 ) – There is no justification for undermining the limits of the possessor’s liability under Paragraph 9 of the German Law on Patents by attributing the indirect possessor’s intention to the direct possessor. – That finding can be transposed to trade mark law. It would be an overextension of the limits of the possessor’s liability under Article 9(3)(b) of Regulation 2017/1001 to attribute that liability to a warehouse keeper with no knowledge of the infringement on the sole ground that the infringing goods are in his possession.

19. On that basis, the Bundesgerichtshof (Federal Court of Justice) has referred to the Court of Justice for a preliminary ruling the following question on the interpretation of Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001: ‘Does a person who, on behalf of a third party, stores goods which infringe trade mark rights, without having knowledge of that infringement, stock those goods for the purpose of offering them or putting them on the market, if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market?’

III. Procedure before the Court of Justice

20. The order for reference was received at the Court of Justice on 7 September 2018, written observations having been lodged by Coty Germany, Amazon Services and the European Commission. All of those parties took part in the hearing held on 19 September 2019, which was also attended by the Government of the Federal Republic of Germany.

IV. Analysis

A. Admissibility of the question referred

21. Coty Germany states that, since the order for reference does not duly reflect the situation in dispute, it challenges the admissibility of the question referred on the ground that it is hypothetical. It submits that the actions of the undertakings Amazon Services and Amazon FC are not those of a mere warehouse keeper or carrier of the goods: their involvement in the contracts relating to the goods offered on the platform and in the collection of the sale price means, inter alia, that they have detailed information on the goods stored and dispatched.

22. In the view of Coty Germany, those two undertakings do not simply make an electronic sales platform available and store the goods sold by their customers, respectively, but provide a range of services that add value to the distribution of those goods (goods which, in this case, infringe trade mark rights). Moreover, the seller granted them full and effective possession of the goods.

23. The Court of Justice has repeatedly held that, in the procedure under Article 267 TFEU, it is prohibited not only from assessing matters that constitute questions of fact ( 12 ) but also from verifying the accuracy of those facts. ( 13 ) Under the division of jurisdiction between the Court of Justice and the national courts, it falls to the former to take account of the factual and legislative context in which the questions put to it are set, as described in the order for reference. ( 14 )

24. The fact that one of the parties to the proceedings takes issue with the version of the facts set out by the referring court, or considers it to be insufficient, is not an adequate basis on which to dismiss a question referred for a preliminary ruling as inadmissible. The Court of Justice is not asked to verify the accuracy of the version of the facts presented to it and the presumption of relevance which a question referred for a preliminary ruling enjoys must prevail. ( 15 ) A question referred for a preliminary ruling may be declared inadmissible, inter alia, where it is obvious that the interpretation of EU law that is sought bears no relation to the actual facts of the main action or to its purpose. ( 16 ) None of the foregoing is true of this reference.

25. It is true, however, that, even though it falls to the national court to assess the facts, the Court of Justice must endeavour to give that court answers that will be useful to it. ( 17 ) There is nothing to prevent the Court of Justice from providing the national court with information, based on the documents before it and on the observations which have been submitted to it, on matters not dealt with in the reference for a preliminary ruling, if it considers it pertinent to do so in order to improve its cooperation with the referring court. ( 18 )

26. At the hearing, the Court of Justice asked Amazon Services and Amazon FC to specify the ‘scale of the services offered by Amazon under its “Fulfilment by Amazon” program’. In particular, it asked them to ‘take a stance on the description provided by Coty Germany in its written observations … of the transactions performed by Amazon on behalf of the third-party seller in the dispute in the main proceedings’. These questions are in themselves revelatory of an initial predisposition to supplement the factual information that is provided, perhaps somewhat tersely, in the order for reference.

27. It is for this reason that, in the light of how this reference for a preliminary ruling has materialised, I shall be taking a twofold approach based on two views – rather than versions – of the facts: – On the one hand, I shall confine myself to the account of the facts as described in the order for reference. According to that account, Amazon Services and Amazon FC, both members of an e-commerce platform, act (in the case of the former) as the principal operator on that online platform and (in the case of the latter) as the provider of, inter alia, warehousing services. – On the other hand, and in the alternative, I shall consider the further details that have emerged from the observations submitted by the parties and their answers to some of the questions raised at the hearing. The picture this approach paints is more complex and requires account to be taken of the integrated (rather than autonomous) business model operated by the Amazon group, as well as of the particulars of the services it provides to third-party sellers once they join the ‘Fulfilment by Amazon’ program.

28. The first approach, as I said, looks at the factual account provided by the Bundesgerichtshof (Federal Court of Justice, Germany), which is consistent with that contained in the judgment on appeal. That court will have to decide, in short, whether to have regard only to the facts as they have come to it from the lower courts (as a court of cassation ordinarily would) or whether it may go further and assess the impact of other factors which it has not itself incorporated into its reference for a preliminary ruling.

29. In any event, there are two elements which are not disputed by any of the parties: (a) the trade mark in question was used commercially without authorisation from its proprietor (or the proprietor’s licensee); (b) that use infringed the rights inherent in the trade mark, which were not exhausted within the meaning of Article 15 of Regulation 2017/1001, since the goods in question were not ‘goods which [had] been put on the market in the European Economic Area under that trade mark by the proprietor or with his consent’.

B. Interpretation of Article 9(3)(b) of Regulation 2017/1001

30. The registration of an EU trade mark confers on its proprietor the exclusive right to prevent all third parties not having his consent from using in the course of trade a sign identical to that trade mark in relation to goods or services which are identical to those for which the trade mark is registered. This is the substance of the provision contained in Article 9(2) of Regulation 2017/1001.

31. It is only where those conditions (that is to say, the ones laid down in the aforementioned paragraph 2) are met that the trade mark proprietor may prohibit third parties from ‘offering the goods, putting them on the market, or stocking them for those purposes under the sign, or offering or supplying services thereunder’. This is the provision contained in paragraph 3(b) of the same article.

32. Although the referring court does not ask about the conditions laid down in the aforementioned paragraph 2, I think it appropriate to examine that paragraph, given the bearing it may have on the answer to the question referred by that Court. Moreover, the issues relating to use will crop up again when we come to consider the interpretation of paragraph 3 of the same provision.

1. Preliminary point: the possibility that the trade mark was not used in the course of trade

33. The judgment on appeal stated that Amazon FCs conduct did not entail any use within the meaning of the aforementioned paragraph 2, ( 19 ) but did not elaborate on that assertion, the appeal court having settled the dispute on the basis that the defendant had not possessed the goods with the intention of selling them and had had no knowledge that these were goods for which the trade mark rights were not exhausted.

34. The referring court, for its part, appears by implication to bring the circumstances under which Amazon Services and Amazon FCO use the trade mark at issue within the scope of Article 9(2)(a) of Regulation 2017/1001.

35. The Commission nonetheless observes that, since the Amazon group undertakings were probably not using the sign at issue as a trade mark, the conditions governing the application of Article 9(2) of Regulation 2017/1001 are not met. Given that paragraph 2 is a sine qua non for the application of paragraph 3, there would be no need to examine the latter paragraph if the Commission’s point of view were accepted.

36. In the Commission’s submission, it follows from the case-law of the Court of Justice that intermediaries ( 20 ) such as warehouse keepers and carriers, who provide services for third parties, do not incur liability for any infringements of trade mark rights which they commit, since they do not use the sign in their own commercial communication or in the course of trade. ( 21 )

37. By the same token, the Commission recalls that the Court of Justice dealt with a reference for a preliminary ruling on the conduct of an electronic marketplace operator (eBay) whose website displayed listings of goods protected by EU trade marks and offered for sale by persons who had registered for that purpose with the operator and created a seller’s account with it (eBay having charged a percentage fee on completed transactions). According to the Court of Justice, if that operator only exhibits the trade mark on its electronic marketplace for the benefit of the seller, it does not use the mark. ( 22 )

38. The Court of Justice held that: – In the case of a warehouse keeper, ‘its provision of a warehouse service for goods bearing another’s trade mark does not constitute use of a sign identical to that trade mark for goods or services identical or similar to those in respect of which the mark is registered’. ( 23 ) – In the case of an electronic marketplace operator, ‘if a sign identical with, or similar to, the proprietor’s trade mark is to be ‘used’, within the meaning of Article 5 of [First Council] Directive [89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (OJ 1989 L 40, p. 1)] and Article 9 of [Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1)], by a third party, that implies at the very least that that third party uses the sign in its own commercial communication. In so far as that third party provides a service consisting in enabling its customers to display on its website, in the course of their commercial activities such as their offers for sale, signs corresponding to trade marks, it does not itself use those signs within the meaning of that EU legislation’. ( 24 )

39. The Court of Justice thus draws a distinction between operators for the purposes of determining whether a third party uses a sign identical to the trade mark. A sign will not be so used, within the meaning of Article 9(2) of Regulation 2017/1001, where the third party simply provides a technical solution necessary to enable a sign to be used ( 25 ) or engages in passive behaviour without having any direct or indirect control over the act constituting the use. ( 26 )

40. It is with the same purpose of examining whether the sign is used in situations of this kind that the Court of Justice carries out its examination of the link between the sign and the service provided by the supplier. ( 27 ) In the absence of such a link, there will be no use of the trade mark by the latter.

41. From the point of view of the facts as set out in the order for reference, the inference might be drawn that Amazon Services and Amazon FC do not use the perfume trade mark as their own but simply provide sellers and buyers with standard intermediation services, without using the Davidoff sign in their commercial communication or in the course of trade.

42. On the basis of the alternative approach to the facts which I mentioned earlier, however, it might be concluded that the Amazon group undertakings did use the Davidoff sign, to the extent that they did not confine themselves to making the digital technology available to sellers, but offered a service such as to create a link between the sign and that service.

43. It seems to me, therefore, that the Commission is correct in the position it has adopted, inasmuch as, after calling into question the proposition that the trade mark is used if the Amazon group undertakings merely create the technical conditions necessary for its use by third parties, ( 28 ) it opens the door to the possibility that those undertakings use the trade mark in the course of trade. For that to be the case, the provision of their services would have to entail active behaviour and direct or indirect control over the act constituting the use, ( 29 ) a matter that would be for the referring court to analyse. I shall address this point later.

2. Possession of goods for the purposes of offering them or putting them on the market

44. If we accept, for the sake of argument, that the conditions laid down in Article 9(2)(b) of Regulation 2017/1001 are met, we must then define the scope of the ius prohibendi provided for in paragraph 3(b) thereof.

45. The forms of conduct which the trade mark proprietor can prohibit third parties from engaging in without his consent include ‘offering the goods’, ‘putting them on the market’ and ‘stocking them for those purposes’. The referring court asks in particular about the meaning of the phrase ‘possession … for the purposes of offering or putting on the market’ goods which infringe the trade mark. ( 30 )

46. The term ‘possession’, the precise meaning of which the referring court is uncertain of, does not appear in all the language versions of Article 9(3)(b) of Regulation 2017/1001. The French (‘détenir’) and the German (‘besitzen’) use vocabulary that is directly related to the legal concept of possession (possessio). Others, such as the Spanish, the Italian, the Portuguese, the English and the Swedish, prefer verbs or nouns denoting the action of storing goods. ( 31 )

47. To my mind, however, all of the languages convey the idea of possessing with commercial objectives in mind, since storage (or, in the versions that use the term, possession) comes with the requirement that this take place ‘for those purposes’, that is to say for the purposes of offering the goods or putting them on the market, there being no linguistic discrepancies in evidence in the second part of the phrase.

48. There are therefore two conditions governing the application of this aspect of the ius prohibendi enjoyed by the trade mark proprietor and both must be present in order for that right to be infringed: – A material element – possession of the goods infringing the rights in the trade mark. – An element of intent – the volitional nature of the possession, for the purpose of bringing the product to market by means of any legal transaction, including by offering it.

(a) The material element: possession

49. As far as possession is concerned, a distinction must be drawn between the situation of a warehouse keeper and that of an electronic marketplace operator: – With regard to the former, it follows from the case-law cited above ( 32 ) that a warehouse keeper who merely holds goods for a third party in the routine course of his business does not meet the criteria necessary for infringement of trade mark rights, notwithstanding that he is in direct possession of the goods in question, in the case where it is the third party rather than the warehouse keeper himself who is pursuing commercial aims with those goods. For that reason, his activity does not appear to entail the creation of a link between the good’s sign and the warehousing service. ( 33 ) – Mere electronic marketplace operators could not even be regarded as being in possession of goods that infringe trade mark rights if their involvement were confined to an intermediation similar to that examined in the judgment in L’Oréal.

50. If those categories were applied to the facts as described by the referring court, neither Amazon Services nor Amazon FC would possess goods that infringe a trade mark for the purposes of putting them on the market or offering them within the meaning of Article 9(3)(b) of Regulation 2017/1001. I therefore endorse the referring court’s assessment that the conduct of those undertakings is not caught by the aforementioned provision.

51. That assessment might change, however, under the alternative approach to the facts which I mentioned earlier. On that basis, Amazon Services and Amazon FC, both of which use an integrated business model, engage, as part of the sales process, in the very type of active conduct of which the provision gives examples when listing acts such as ‘offering the goods’, ‘putting them on the market’ or ‘stocking them for those purposes’. The corollary of that conduct would be the appearance of total control over the sales process.

52. In so far as concerns the business of the Amazon group undertakings as analysed through that prism, a distinction may be drawn between the exogenous elements of the business (those perceived by an average consumer who purchases a product on Amazon) and the endogenous elements of it (those that are connected with the relationship between the seller and Amazon but are not perceived externally). ( 34 )

53. I shall focus on the point of view of an end consumer who purchases a product via a website such as amazon.de and that transaction takes place under the Amazon Fulfilment scheme. To the extent that the buyer might form the impression that it is Amazon Services which puts the goods on the market, which is to say that there is a ‘material link in trade between those goods and the undertaking from which they originate’, ( 35 ) the same inference might be drawn as was drawn by the Court of Justice in its previous case-law, which is one that is in favour of the proposition that the trade mark is used.

54. A buyer looking for a product on the Amazon website is presented with various offerings of the same product that may come either from sellers having entered into a contract with Amazon under which the latter sells their goods through its electronic marketplace, or from Amazon itself, which sells them on its own account. It is not always easy, even for a reasonably well-informed and reasonably observant internet user, to tell whether the goods presented to him originate from the trade mark proprietor or from an undertaking economically linked to it or, conversely, from a third party. ( 36 ) This undermines the essential function of the trade mark, which is to indicate the origin of the product.

55. Under the ‘Fulfilment by Amazon’ program, Amazon undertakings, which operate in coordination with each other, do not concern themselves solely with the neutral storage and transportation of goods, but with a much broader range of activities.

56. Once signed up to that program, the seller forwards the goods selected by the customer to Amazon and it is the Amazon group undertakings that receive them, store them in their distribution centres, prepare them (which may even take the form of labelling, special packaging or gift-wrapping) and dispatch them to the buyer. Amazon may also take care of advertising ( 37 ) and displaying offers on its website. It is Amazon, moreover, that provides customer service facilities for purchase enquiries and returns and manages refunds for defective goods. ( 38 ) It is also Amazon which takes payment for the goods from the buyer, and later deposits that payment in the seller’s bank account. ( 39 )

57. As part of their active and coordinated involvement in the marketing of goods, Amazon undertakings take on many of the tasks that would ordinarily be performed by the seller, for whom Amazon ‘does the heavy lifting’, as its website points out. Posted on that website as an incentive for sellers to join the ‘Fulfilment by Amazon’ program is the following sentence: ‘Send your products to Amazon’s Fulfilment Centres and let us take care of the rest’. In those circumstances, the Amazon undertakings engage in ‘active behaviour and [exercise] direct or indirect control of the act constituting … use [of the trade mark]’. ( 40 )

58. If, in the present case, it were confirmed that the Amazon undertakings provided those services (or at least the most important ones) under the ‘Fulfilment by Amazon’ program, ( 41 ) they might be regarded, whether in their capacity as electronic marketplace operator or warehouse keeper, as performing functions in the marketing of the product that go beyond merely creating the technical conditions necessary to enable the sign to be used. Consequently, if that product infringes the trade mark proprietor’s rights, the proprietor’s reaction might legitimately be to prohibit those undertakings from using the sign.

59. The major role played by the Amazon undertakings in the marketing process cannot be diluted by taking separate account of the activity performed by each of them individually. It would be contrary to economic reality and the principle of equality for storage, order management and the other services provided by those undertakings to be treated in the same way as the services supplied by a mere independent carrier or warehouse keeper under a business model disconnected from any other operation in the distribution chain. ( 42 )

60. Neither is the foregoing precluded by the fact that the Amazon group undertakings say that they act as intermediaries on behalf of the seller. First, that alleged intermediation exhibits the characteristics of active involvement in the marketing process that have already been highlighted. Secondly, in the view of the Court of Justice, ‘it is … irrelevant that the use is by the third party in the context of the marketing of goods on behalf of another operator having sole title to those goods. ( 43 )

61. In short, it makes no difference for the purposes of this case that the Amazon group undertakings acquire ‘no title to [the goods] in the course of the transaction in which [they] act …’. ( 44 )

62. Given that, in this instance, the role of intermediary is not neutral, the exemptions from liability enjoyed by providers of information society services which are provided for in Article 14(1) of Directive 2000/31 do not apply in this dispute. Those exemptions are limited to the technical process of operating and giving access to a communication network over which information made available by third parties is transmitted or temporarily stored. ( 45 ) They cannot therefore be applied to an activity such as the physical storage and material delivery of goods.

63. Furthermore, the Court of Justice has held that Article 14(1) of Directive 2000/31 does not apply to an electronic market operator that plays an active role such as providing ‘assistance which entails, among other things, optimising the presentation of the offers for sale … or promoting those offers’. ( 46 )

(b) The element of intent: the purpose of offering the goods in storage (or possession) or putting them on the market

64. Article 9(3)(b) of Regulation 2017/1001 requires that possession of the goods that infringe trade mark rights be linked to the objectives of offering them to the public or putting them on the market.

65. Amazon Services and Amazon FC argue that there is no direct relationship between themselves and those objectives, since their input is confined to providing services to the real sellers. They warn that extending liability for infringement of a trade mark right to traders that store goods but have no intention of selling them (a role common to any intermediary, warehouse keeper, carrier or freight forwarder) would create considerable legal uncertainty for legitimate trade.

66. The referring court appears to accept that argument, since its question talks of ‘a person who … stores goods which infringe trade mark rights … if it is not that person himself but rather the third party alone which intends to offer the goods or put them on the market’.

67. It could therefore be said that, as so formulated, the question contains its own answer: if it is the third party (the seller) alone that seeks or intends to offer the goods or put them on the market, the Amazon group undertakings cannot possibly have the same intention. On that basis, the conduct of those undertakings simply could not be brought within the scope of Article 9(3)(b) of Regulation 2017/1001, since the purposive element required by that provision is lacking.

68. Once again, the answer might be different if the facts were viewed in such a way as to emphasise the unique role the Amazon undertakings play in being so heavily involved in the marketing of those goods under the ‘Fulfilment by Amazon’ program.

69. From that perspective, of their role being much more than as mere neutral assistants to the seller, it is difficult to deny that those undertakings, together with the seller, have as their purpose to offer the goods at issue or put them on the market.

C. The liability of undertakings which store goods that infringe trade mark rights without having any knowledge of that infringement

70. The referring court explicitly mentions the fact that the undertakings in possession of the goods have no knowledge of the infringement (the assumption being that it is a third party that seeks to offer them or put them on the market) as a factor that might have a bearing on their liability. It is of course referring to the Amazon undertakings that are the defendants in this dispute.

71. Article 17 of Regulation 2017/1001 provides that infringements of an EU trade mark are to be governed by the national law relating to infringement of a national trade mark (paragraph 1). The Regulation itself ‘does not prevent actions concerning an EU trade mark being brought under the law of Member States relating in particular to civil liability and unfair competition’ (paragraph 2). It goes on to say, in Article 129(2) that, ‘on all trade mark matters not covered by this Regulation, the relevant EU trade mark court shall apply the applicable national law’.

72. In the light of Article 1 of Directive 2004/48, ( 47 ) the applicable national law will, on the one hand, be the law that emerges from transposition of the Directive. On the other hand, given that, pursuant to recital 15 thereof, Directive 2004/48 is not to affect Directive 2000/31, the national legislating incorporating the latter directive will also be applicable.

73. The existence or otherwise of knowledge of the infringement of trade mark rights is relevant in the electronic marketplace: this follows from Article 14(1) of Directive 2000/31, on the exemption from liability of intermediary service providers, and from the interpretation of that provision which has been adopted by the Court of Justice.

74. The judgment in L’Oréal, as I have said, removed from the exemption an operator performing an active role in which it acquires knowledge of data relating to offers for sale stored on its server. ( 48 ) A neutral operator will not be exempt either if it has had actual knowledge of illegal activity or information and, as regards claims, if it has been aware of facts or circumstances from which the illegal activity or information is apparent. ( 49 )

75. As regards damages, knowledge (or lack of knowledge) of the illegality may be relevant under Directive 2004/48 too. This follows from the wording of Article 13(1), concerning infringers. In so far as intermediaries are concerned, that same article (paragraph 2) leaves up to the Member States the decision as to the rules to be applied to anyone who ‘did not knowingly, or with reasonable grounds to know, engage in infringing activity’.

76. A matter different from, although linked to, the relevance of the knowledge is the intermediary’s diligence in acquiring it. The case-law of the Court of Justice relating to the last sentence of Article 11 of Directive 2004/48 (concerning injunctions against intermediaries whose services are used by a third party to infringe an intellectual property right) is indicative in this regard. ( 50 )

77. In the L’Oréal decision, the Court analysed the measures which online services providers may be required to take under that provision in order to avoid any future infringement of the intellectual property rights of a third party. In the first place, it recalled Article 15 of Directive 2000/31, which provides that service providers are not subject to a general obligation to monitor. In the second place, it referred to Article 3(2) of Directive 2004/48, emphasising that measures to ensure the enforcement of intellectual property rights must be applied in such a manner as to avoid the creation of barriers to legitimate trade.

78. In that context, a proposal capable of ensuring the right balance between the protection of trade mark rights and the non-existence of barriers to legitimate trade would, in my opinion, be one that distinguishes between intermediaries according to the nature of the services provided to the direct perpetrator of the trade mark infringement.

79. Thus, mere warehouse keepers responsible for purely ancillary tasks would be exempt from liability if they had not knowingly, or with reasonable grounds to know, engaged in the infringing activity. In other words, if they did not know, and could not have known, that the marketing of a product that a seller brings to market without respecting the rights of the trade mark proprietor was illegal.

80. Subject to certain qualifications that need not be highlighted here, it may be said to be inappropriate to impose on such mere warehouse keepers a special duty of diligence to ensure that the rights of the proprietor of the trade mark identifying the goods entrusted to them are observed in every case, unless the illegality of the infringement is obvious. Such a universal requirement would place an excessive burden on the routine business of those undertakings as providers of ancillary services to industry. ( 51 )

81. The picture is different in the case of undertakings, such as the defendants, which, in providing their services under the ‘Fulfilment by Amazon’ program, are involved in the marketing of goods in the manner I have described above. The referring court states that those undertakings did not know that the goods infringed the trade mark rights licensed to Coty Germany. In my opinion, however, that lack of knowledge does not necessarily exonerate them from liability.

82. Given the significant extent to which those undertakings are involved in the marketing of goods under that program, it is reasonable to expect them to exercise special care (diligence) when it comes to monitoring the lawfulness of the goods in which they trade. The very fact that they are aware that, without such monitoring, ( 52 ) they might easily act as a channel for the sale of ‘unlawful, counterfeit, pirated or stolen goods, [and the sale of] goods in an unlawful or unethical manner, violating the proprietary rights of others’, ( 53 ) means that they cannot simply relieve themselves of their liability by attributing it exclusively to the seller.

83. It is a matter for the referring court to make the final adjudication on the civil liability of the defendants, in the light of the circumstances that it considers to have been established. Since this final part of the question referred for a preliminary ruling is confined to the bearing which the defendants’ lack of knowledge of the infringement of the trade mark proprietor’s rights might have on that adjudication, I consider that such ignorance does not in itself exonerate them from liability.

V. Conclusion

84. In the light of the foregoing, I propose that the Court of Justice answer the question referred for a preliminary ruling by the Bundesgerichtshof (Federal Court of Justice, Germany) as follows: ‘Article 9(2)(b) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark and Article 9(3)(b) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark are to be interpreted as meaning that: – A person does not store for a third party (seller) goods which infringe trade mark rights for the purpose of offering them or putting them on the market in the case where, in the absence of any knowledge of that infringement on his part, it is not that person himself but only the third party who seeks to offer the goods or put them on the market. – However, if that person is actively involved in the distribution of those goods under a scheme exhibiting the features of the ‘Fulfilment by Amazon’ program, which the seller joins, that person may be regarded as storing those goods for the purposes of offering them or putting them on the market. – The fact that that person does not know that the third party is offering or selling his goods in infringement of the rights of the trade mark proprietor under a scheme such as that mentioned above does not exonerate that person from liability in the case where he could reasonably have been expected to put in place the means to detect that infringement’.

( 1 ) Original language: Spanish.

( 2 ) Judgment of 6 December 2017 (C‑230/16, EU:C:2017:941).

( 3 ) The context of the question referred for a preliminary ruling is EU trade mark law. If it is ultimately found that the defendants have not used the trade mark, their liability could still be analysed either under Directive 2000/31/EC of the European Parliament and of the Council of 8 June 2000 on certain legal aspects of information society services, in particular electronic commerce, in the Internal Market (‘Directive on electronic commerce’) (OJ 2000 L 178, p. 1), if they act as e-commerce intermediaries, or under Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights (OJ 2004 L 157, p. 45).

( 4 ) Council Regulation of 26 February 2009 on the Community trade mark (OJ 2009 L 78, p. 1).

( 5 ) On 23 March 2016, ‘Community trade marks’ came to be known as ‘EU trade marks’, pursuant to Article 1(2) of Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 amending Council Regulation (EC) No 207/2009 and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs) (OJ 2015 L 341, p. 21).

( 6 ) Regulation of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1).

( 7 ) That is to say, Article 9(2)(b) of Regulation No 207/2009 and Article 9(3)(b) of Regulation 2017/1001.

( 8 ) On Amazon’s five websites in the European Union, this program is called Versand durch Amazon (amazon.de); Logística de Amazon (amazon.es); Logistica di Amazon (amazon.it); Expedié par Amazon (amazon.fr); and Fulfilment by Amazon (amazon.co.uk).

( 9 ) In the alternative, it sought the same injunction in respect of the ‘Davidoff Hot Water EdT 60 ml’ trade mark or consignments of that perfume supplied by the seller.

( 10 ) Judgment of the Oberlandesgericht München (Higher Regional Court, Munich, Germany) of 29 September 2017 (Az.: 29 U 745/16).

( 11 ) To this end, it cites Section 9, second sentence, point 1, of the German Patentgesetz (Law on Patents).

( 12 ) Order of 7 October 2013, Società cooperativa Madonna dei miracoli (C‑82/13, EU:C:2013:655, paragraph 13).

( 13 ) Judgment of 26 April 2012, Balkan and Sea Properties and Provadinvest (C‑621/10 and C‑129/11, EU:C:2012:248, paragraph 41 and the case-law cited).

( 14 ) Judgment of 26 October 2017, Argenta Spaarbank (C‑39/16, EU:C:2017:813, paragraph 38 and the case-law cited).

( 15 ) Judgment of 22 September 2016, Breitsamer und Ulrich (C‑113/15, EU:C:2016:718, paragraph 34 and the case-law cited).

( 16 ) Judgment of 20 December 2017, Global Starnet (C‑322/16, EU:C:2017:985, paragraph 17 and the case-law cited).

( 17 ) Judgment of 5 June 2014, I (C‑255/13, EU:C:2014:1291, paragraph 55 and the case-law cited).

( 18 ) This may be the case, in particular, where the Advocate General has carried out an analysis of the question referred on the basis of an interpretation of the facts which is at variance with the account of the facts provided by the referring court. In some cases [judgment of 20 September 2001, Grzelczyk (C‑184/99, EU:C:2001:458, paragraphs 16 to 18)], the Court of Justice has allowed the referring court to assess in the light of the Opinion of the Advocate General whether the facts and the circumstances of the dispute in the main proceedings permit a different approach. In that case, Advocate General Alber had taken the view that Mr Grzelczyk met the conditions required in order to be regarded as a worker within the meaning of the TFEU rather than merely as a student, as the referring court had described him. The Advocate General was thus proposing a slightly different perspective from that adopted by the referring court. The Court of Justice, however, adhered strictly to the facts as set out in the order for reference. See the Opinion of 28 September 2000 in that case (EU:C:2000:518), points 65 to 75.

( 19 ) Judgment of the Oberlandesgericht München (Higher Regional Court, Munich), cited above, second part, B. I. 1. a) bb) (1).

( 20 ) This is the classification it gives to the two Amazon group undertakings: in the case of Amazon Services, in the light of Directive 2000/31; and, in the case of Amazon FC, in the light of Directive 2004/48.

( 21 ) The Commission cites, inter alia, the judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497, paragraph 45).

( 22 ) Judgment of 12 July 2011, L’Oréal and Others (C‑324/09, EU:C:2011:474; ‘judgment in L’Oréal’), paragraphs 102 to 104.

( 23 ) Judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497, paragraph 45).

( 24 ) Judgment in L’Oréal, paragraphs 102 and 103.

( 25 ) Judgment of 15 December 2011, Frisdranken Industrie Winters (C‑119/10, EU:C:2011:837; ‘judgment in Frisdranken Industrie Winters’), paragraph 29.

( 26 ) Judgment of 3 March 2016, Daimler (C‑179/15, EU:C:2016:134; ‘judgment in Daimler’), paragraph 39.

( 27 ) Judgments in Frisdranken Industrie Winters, paragraph 32; of 23 March 2010, Google France and Google (C‑236/08 to C‑238/08, EU:C:2010:159; ‘judgment in Google France and Google’), paragraph 60; L’Oréal, paragraph 92; and order of 19 February 2009, UDV North America (C‑62/08, EU:C:2009:111; ‘order in UDV North America’), paragraph 47.

( 28 ) Judgments in Google France and Google, paragraph 57, and Frisdranken Industrie Winters, paragraph 29.

( 29 ) By reference to the judgment in Daimler, paragraphs 39 and 41, and the judgment of 25 July 2018, Mitsubishi Shoji Kaisha and Mitsubishi Caterpillar Forklift Europe (C‑129/17, EU:C:2018:594, paragraph 38).

( 30 ) I do not see any need for me to elaborate on how the concepts of ‘offering’ and ‘putting on the market’ are usually understood in a commercial context. In short, the former would denote the readiness to deliver the goods bearing the trade mark to a third party, be this an individual or a group, be the offer legally binding on the person making it from the outset or simply an invitation to treat. The latter, ‘putting on the market’, refers to the activity whereby goods are introduced into commerce and in the course of which the right of disposal usually passes to a third party.

( 31 ) ‘Almacenarlos’, ‘stoccaggio’, ‘armazená-los’, ‘stocking’ and ‘lagra’, respectively.

( 32 ) See point 35 et seq. of this Opinion and the accompanying footnotes.

( 33 ) The situation is therefore comparable to that of the undertaking that filled cans bearing signs similar to a registered trade mark. See the judgment in Frisdranken Industrie Winters, paragraphs 33 and 34.

( 34 ) At the hearing, counsel for Amazon Services, when answering the questions put by the Chamber, referred to the seller’s internal relationship with Amazon as reflected in a standard contract and in the creation of a ‘seller’s account’ whereby the seller manages his product listing and selects the services he wishes to sign up to.

( 35 ) Order in UDV North America, paragraph 49, which itself cites paragraph 60 of the judgment of 16 November 2004, Anheuser-Busch (C‑245/02, EU:C:2004:717).

( 36 ) Judgment in L’Oréal, paragraph 94.

( 37 ) Amazon makes it easier for sellers to promote their goods by allocating them a preferential ranking in the search results, subject to certain conditions.

( 38 ) At the hearing, counsel for Amazon Services was at pains to separate Amazon’s activities from purchase and sale per se, arguing that, from a strictly legal point of view, it is the seller that procures the goods, defines the price and transfers ownership; Amazon does not offer the goods but only presents them. This, however, is not what matters from the point of view of the essential function of the trade mark.

( 39 ) A contrario sensu, judgments in Google France and Google, paragraph 57, and Frisdranken Industrie Winters, paragraph 29.

( 40 ) Judgment in Daimler, paragraph 39.

( 41 ) Any such confirmation would be a matter for the referring court, if its rules of procedure allow it to rely on an account of the facts not entirely in keeping with the account it took from the appeal court (see point 28 of this Opinion).

( 42 ) At the hearing, counsel for the Government of the Federal Republic of Germany pointed out the need to distinguish between different business models and, in the case of an integrated structure (such as that operated by Amazon), to reject a fictitious segmentation of the various stages in the marketing process.

( 43 ) Order in UDV North America, paragraph 51.

( 44 ) Ibidem, paragraph 48.

( 45 ) Recital 42.

( 46 ) Judgments in L’Oréal, paragraph 116, and Google France and Google, paragraph 114.

( 47 ) ‘For the purposes of this Directive, the term “intellectual property rights” includes industrial property rights’.

( 48 ) See point 63 of this Opinion.

( 49 ) Judgment in L’Oréal, paragraphs 116 and 119.

( 50 ) A further potential source of guidance, although to be handled with caution, is the case-law of the Court of Justice concerning Article 3(1) of Directive 2001/29/EC of the European Parliament and of the Council of 22 May 2001 on the harmonisation of certain aspects of copyright and related rights in the information society (OJ 2001 L 167, p. 10). In that context, the Court of Justice has used the subjective element (knowledge) when interpreting the concept of ‘communication to the public’. In particular, it has had regard to situations in which the person who makes the work available to the public must have known that the hyperlink posted by him gives access to a work illegally published on the internet. It has effectively gone so far as to establish a rebuttable presumption of knowledge in cases where the hyperlink is posted in the pursuit of financial gain. See the judgment of 8 September 2016, GS Media (C‑160/15, EU:C:2016:644).

( 51 ) Of course, they would not be able to claim ignorance if they had been alerted to the infringement either by the trade mark proprietor or someone acting on his behalf.

( 52 ) Such monitoring would of course require them to be able to identify at any time who has sent goods to them under the ‘Fulfilment by Amazon’ program. This would avoid situations such as that at issue, in which Amazon Services was unable to identify the origin of 11 of the units of ‘Davidoff Hot Water EdT 60 ml’ perfume (point 12 of this Opinion). At the hearing, counsel for Amazon claimed that that situation was exceptional and due to human error.

( 53 ) Amazon.Com Inc’s report to the US Securities and Exchange Commission for 2018 reads as follows in relation to the risks involved: ‘We also may be unable to prevent sellers in our stores or through other stores from selling unlawful, counterfeit, pirated, or stolen goods, selling goods in an unlawful or unethical manner, violating the proprietary rights of others, or otherwise violating our policies … To the extent any of this occurs, it could harm our business or damage our reputation and we could face civil or criminal liability for unlawful activities by our sellers’. It is also appropriate to mention cause 7 in the Amazon Services Europe Business Solutions Agreement, as last amended (in August 2019), from which it is apparent that Amazon assumes direct liability in conjunction with third parties, be they proprietors of intellectual property rights or purchasers of goods, under the conditions which that text sets out. Reference was made to both documents at the hearing.