Provisional text

delivered on 27 March 2025 (1)

Case C‑76/24

(Request for a preliminary ruling from the Bundesgerichtshof (Federal Court of Justice, Germany))

( Reference for a preliminary ruling – Intellectual property – National trade marks – Directive (EU) 2015/2436 – Article 10(3)(b) – Effects of the trade mark – Right to prohibit all third parties from stocking goods for the purpose of offering them or putting them on the market – Concept of ‘stocking of goods’ – Stocking of goods in another Member State – Principle of territoriality – Online commerce – Consignment of the goods to the Member State in which the mark is protected )

Introduction

This request for a preliminary ruling concerns the interpretation of Article 10(3)(b) of Directive (EU) 2015/2436. (2)

The request was made by the Bundesgerichtshof (Federal Court of Justice, Germany), which is required to adjudicate at last instance following the decisions delivered by a court of first instance and a court of appeal, in proceedings between PH, a proprietor of German trade marks for diving accessories, and Tradeinn Retail Services S.L. (‘TRS’), a company established in Spain, relating to an application for an injunction ordering the defendant to cease using those trade marks.

The Court will be required to address the question of the rights attached to a national trade mark protected in the territory of a Member State when goods bearing that trade mark are stocked by third parties in another Member State for the purpose of being offered or put on the market in the Member State in which the trade mark is protected.

Legal framework

European Union law

Article 10 of Directive 2015/2436, entitled ‘Rights conferred by a trade mark’, provides:

‘1. The registration of a trade mark shall confer on the proprietor exclusive rights therein.

(a) the sign is identical with the trade mark and is used in relation to goods or services which are identical with those for which the trade mark is registered;

(b) the sign is identical with, or similar to, the trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;

(c) the sign is identical with, or similar to, the trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to, or not similar to, those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

…

(b) offering the goods or putting them on the market, or stocking them for those purposes, under the sign, or offering or supplying services thereunder;

…

(e) using the sign on business papers and in advertising;

…’

German law

Under the heading ‘Exclusive right of a trade mark proprietor, right to obtain a cease-and-desist order, right to damages’, Paragraph 14(1) to (3) of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen –Markengesetz (Law on the protection of trade marks and other distinctive signs) of 25 October 1994 (BGBl. 1994 I, p. 3082), as amended by the Gesetz zur Umsetzung der Richtlinie (EU) 2015/2436 des Europäischen Parlaments und des Rates vom 16. Dezember 2015 zur Angleichung der Rechtsvorschriften der Mitgliedstaaten über die Marken (Markenrechtsmodernisierungsgesetz) (Law transposing Directive 2015/2436) of 11 December 2018 (BGBl. 2018 I, p. 2357) (‘the MarkenG’) is intended to transpose Article 10(1) to (3) of Directive 2015/2436.

Under the first sentence of Paragraph 14(2), point 1 of the MarkenG, third parties are to be prohibited from using in the course of trade, without the consent of the proprietor of the trade mark, any sign which is identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is protected.

In accordance with Paragraph 14(3), points 2 and 6 of the MarkenG, if the requirements specified in subparagraph 2 of that paragraph are met, the following, in particular, are to be prohibited: offering the goods, putting them on the market or stocking them for those purposes under the sign, and using the sign on business papers or in advertising.

In the words of Paragraph 14(5) of the MarkenG, anyone who uses a sign infringing subparagraphs 2 to 4 may be sued by the proprietor of the trade mark and enjoined to cease and desist where there is a risk that the infringement will be repeated. That right also exists where there is a risk that an infringement will be committed for the first time.

The facts, the main proceedings, the questions referred for a preliminary ruling and the procedure before the Court

PH is the proprietor of two German figurative marks containing word elements registered for, inter alia, ‘diving equipment, diving suits, diving gloves, diving masks and breathing apparatus for diving’, reproduced below:

TRS, which is established in Spain, advertised, on its website www.scubastore.com and via the online trading platform www.amazon.de, diving accessories which it offered for sale using PH’s trade marks. Certain photographs of the goods showed them bearing those trade marks. That was the case of a trim pocket bought by PH on 8 June 2019 as a test purchase, although when it was delivered to him neither the trim pocket nor its packaging bore those trade marks.

Following an unsuccessful cease-and-desist letter, PH brought an action before the Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth, Germany) seeking an injunction requiring TRS to refrain from using the trade marks in question in the course of trade in Germany for diving accessories. In particular, he requested that TRS be prohibited from affixing those signs to diving accessories, their presentation or their packaging, from offering, manufacturing, distributing or otherwise putting on the market diving accessories under those signs and from promoting or stocking them for those purposes. PH also requested that TRS be ordered to pay him damages, to provide certain information and to reimburse the costs of the cease-and-desist letter, plus interest.

TRS consented to the request to cease to offer or promote diving accessories under the trade marks in question and to provide certain information, and also to the application for a declaration that it was liable for damages in that respect.

By decision of 3 February 2022, the Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth) gave judgment against TRS in accordance with its partial consent and also awarded PH an amount in respect of the costs of the cease-and-desist letter, plus interest. The action was dismissed for the remainder.

On appeal by PH, the Oberlandesgericht Nürnberg (Higher Regional Court, Nuremberg, Germany) extended the cease-and-desist order, in particular by adding the words ‘and from distributing or stocking them for that purpose’, and dismissed the appeal for the remainder.

By its appeal on a point of law before the Bundesgerichtshof (Federal Court of Justice), the referring court, TRS challenges, in particular, the judgment against it by the Oberlandesgericht Nürnberg (Higher Regional Court, Nuremberg) for stocking diving accessories that infringe PH’s trade marks, and requests that the decision of the Landgericht Nürnberg-Fürth (Regional Court, Nuremberg-Fürth) at first instance be reinstated.

According to the referring court, the unlawful act of stocking referred to in Paragraph 14(2) and (3), point 2 of the MarkenG requires the presence of a material element, namely the possession of the goods that infringe the rights in the trade mark, and an element of intent, namely the volitional nature of the possession of the product, for the purpose of bringing it to the market by means of any legal transaction, including by offering it. As those rules are intended to transpose Article 10(2)(a) and (3)(b) and (e) of Directive 2015/2436, they should be interpreted in accordance with that directive.

The referring court’s doubts relate to the material element. In the first place, the referring court observes that, under the principle of territoriality, which governs intellectual property, the protection afforded by a German trade mark is limited to the territory of the Federal Republic of Germany and only actions carried out in that territory are punishable. In the light of that principle, the referring court raises the question whether the proprietor of a national trade mark may, in application of Article 10(3)(b) of Directive 2015/2436, prohibit a third party from stocking in another country goods that infringe his or her trade mark for the purpose of offering them or putting them on the market in the country in which the trade mark is protected.

The referring court asserts that there are two possible interpretations of that provision. In accordance with the principle of territoriality, it might be considered that a person who stocks goods in another country does not infringe a national trade mark, even though the goods are stocked for the purpose of offering them under the sign in the national territory concerned or putting them on the market there.

However, it is also conceivable to regard it as sufficient – as the court of appeal does – that, in order for the infringement of a national trade mark to be made out, the goods concerned are stocked in another country for the purpose of offering them or putting them on the market under the sign in the country in which the trade mark is protected. In support of that interpretation, the referring court refers to a judgment of the Court, (3) in which the Court held, in relation to copyright, that actions carried out in another country may also infringe a right protected only in the national territory.

In the second place, the referring court wonders whether the concept of ‘stocking’, within the meaning of Article 10(3)(b) of Directive 2015/2436 (‘besitzen’ in the German-language version), requires the possibility of actually accessing the goods that infringe the trade mark or whether it is sufficient to have the possibility of influencing the person with actual access to those goods.

In that regard, the referring court explains that in German law the concept of ‘Besitz’ has a broad scope and encompasses both ‘direct possession’ and ‘indirect possession’. ‘Direct possession’ is understood to be actual power over an object and ceases when the possessor gives up or loses that actual power. On the other hand, where someone possesses a thing on the basis of a relationship that confers or imposes on him or her, for a certain time, a right or an obligation in respect of possession vis-à-vis another person, the latter is classified as an ‘indirect possessor’. The referring court thus gives the example of a remote purchase of goods, in the context of which, at the time when the goods are handed over to the logistics service provider who transports the goods from the seller to the buyer, the seller-consignor becomes an indirect possessor, while the transporter acquires the status of direct possessor.

While, in German law, TRS might then be classified as an ‘indirect possessor’, the referring court doubts that Article 10(3)(b) of Directive 2015/2436 covers possession by third parties. It relies in that regard on the Opinion of Advocate General Campos Sánchez-Bordona in Coty Germany, (4) from which it follows that the term ‘possession’ does not appear in all the language versions of Article 9 of Regulation (EU) 2017/1001, (5) since certain versions prefer verbs or nouns referring to the ‘stocking’ of goods, which requires direct access to the goods.

The referring court states, however, that EU law has already allowed acts carried out by a logistics service provider or by a transporter that infringe a national intellectual property right to be attributed to a trader. (6)

In those circumstances, the Bundesgerichtshof (Federal Court of Justice) decided to stay the proceedings and to refer the following questions to the Court of Justice for a preliminary ruling:

‘(1) Is a proprietor of a national trade mark under Article 10(3)(b) of [Directive 2015/2436] 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) of [Directive 2015/2436] 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?’

Written observations were submitted by the proprietor of the German trade marks and the European Commission.

Analysis

Under Article 10(1) of Directive 2015/2436, the registration of a trade mark is to confer on the proprietor exclusive rights therein, which, according to Article 10(2)(a), is to entitle the proprietor to prevent all third parties not having his or her consent from using in the course of trade a sign identical with the trade mark in relation to goods or services which are identical with those for which the trade mark is registered. Article 10(3) of that directive then lists, in a non-exhaustive manner, several types of use which the proprietor of the trade mark may prohibit. (7) In particular, Article 10(3)(b) of that directive provides that the proprietor of a registered trade mark may prohibit third parties from offering the goods bearing his or her trade mark, putting them on the market or stocking them for those purposes.

By way of preliminary observation, I recall that the protection of trade marks is characterised within the European Union by the coexistence of several systems of protection. On the one hand, by Directive 2015/2436, the EU legislature sought to approximate national trade mark laws. On the other hand, Regulation 2017/1001 established a uniform law on trade marks applying to the entire territory of the European Union. EU trade mark law does not replace the trade mark laws of the Member States but supplements the national protection systems. National trade marks continue to exist because they are deemed necessary by undertakings which do not wish to opt to protect their trade marks at EU level. (8)

I also recall that, in application of the principle of territoriality (lex loci protectionis), the legal effects of a national trade mark are limited to the territory of the State in which it is protected. (9) That principle means that it is the law of the State where protection of a trade mark is sought that determines the conditions of that protection. Furthermore, national law can provide relief only in respect of acts performed in the national territory in question. It follows that, as a general rule, the proprietor of a national trade mark cannot rely on that protection outside that territory. (10) That principle also applies to EU trade marks, as the protection obtained at EU level does not, in principle, allow protection to be claimed in territories outside the European Union. (11)

In the present case, the principle of territoriality is not at issue as such. However, the question arises whether particular situations may occur in which acts performed abroad are considered to constitute an infringement of a national trade mark right, so that the proprietor of the right may rely on Article 10(3)(b) of Directive 2015/2436 to prohibit goods bearing his or her national trade mark being offered, put on the market or being stocked for those purposes. The two questions referred for a preliminary ruling seek, more specifically, to define the extent of one of those acts that may be prohibited by the proprietor of a protected trade mark, namely the act consisting in ‘stocking [goods] for those purposes’.

In that regard, I would add that the Court has already had the opportunity to clarify that it follows from the wording of Article 10(3)(b) of Directive 2015/2436 that the concept of stocking goods ‘for those purposes’ refers to stocking goods for the purpose of offering them or putting them on the market. It follows that, in order for the stocking of goods bearing signs identical with a protected trade mark to be able to be classified as a ‘use’ of that sign, within the meaning of Article 10(2) of that directive, and to permit the proprietor of the trade mark to assert his or her rights and to rely on Article 10(3)(b) of that directive, the trader himself or herself must pursue the purpose referred to in that provision, which consists in offering the goods or putting them on the market. The stocking of goods for the purpose of putting them on the market is therefore an act preparatory to releasing them for consumption, which is expressly identified as such by the EU legislature, which the proprietor of a trade mark may oppose. (12)

The first question, concerning the infringement of a national trade mark right by stocking outside the territory

31.By its first question, the referring court asks whether Article 10(3)(b) of Directive 2015/2436 must be interpreted as meaning that the proprietor of a national trade mark may prohibit a third party from stocking in another country goods that infringe his or her trade mark for the purpose of offering those goods in the country in which the trade mark is protected or putting them on the market there.

32.I consider that the Court’s case-law allows that question to be answered in the affirmative.

33.Ruling with regard to offers for sale or advertising on the internet of goods bearing a sign identical with or similar to a protected trade mark, targeted at consumers in the European Union, the Court has held that the effectiveness of the rules on the protection of trade mark rights would be undermined if they were not to apply to the use of a sign identical with or similar to a trade mark registered in the European Union merely because the third party behind that offer or that advertisement is established in a non-member State, because the server of the website which he or she uses is located in such a State or because the product that is the subject of the offer for sale or the advertisement is located in a non-member State. The Court considered that the proprietor of the trade mark may then oppose those sales, offers for sale or advertisements under either Article 5 of First Directive 89/104 or Article 9 of Regulation No 40/94. (13)

34.The Court further held that the mere fact that a website is accessible from the territory covered by the trade mark is not a sufficient basis for concluding that the offers for sale displayed there are targeted at consumers in that territory. It falls to the national courts to assess on a case-by-case basis whether there are any relevant factors on the basis of which it may be concluded that an offer for sale, displayed on an online marketplace accessible from the territory covered by the trade mark, is targeted at consumers in that territory, taking into account, in particular, the fact that the offer for sale is accompanied by details of the geographic areas to which the seller is willing to dispatch the product. (14)

35.In addition, in certain cases concerning the measures which the proprietor of an intellectual property right may take in the event of the sale in the European Union of goods bearing his or her trade mark and coming from a third State, in particular where the offer or the sale of those goods is carried out while those goods are subject to the external transit procedure or the customs warehouse procedure, the Court has considered, in essence, that protected intellectual property rights may be infringed when, even before they have arrived in the territory covered by that protection, goods coming from third States are the subject of a commercial act targeted at consumers in that territory, such as a sale or an offer for sale. The proprietor of the trade mark may then oppose the offer or the sale of such goods where such offer or sale necessarily entails the putting of those goods on the market in the European Union. (15)

36.Furthermore, as the referring court has observed, the Court, ruling on a request for a preliminary ruling in criminal proceedings for aiding and abetting the prohibited distribution of copyright-protected works, stated that actions carried out abroad may infringe a right protected only in a national territory. Thus, in the judgment in Donner, the Court considered that a trader who directs his or her advertising at members of the public residing in a given Member State and creates or makes available to them a specific delivery system and payment method, or allows a third party to do so, thereby enabling those members of the public to receive delivery of copies of works protected by copyright in that same Member State, performs, in the Member State where the delivery takes place, an act constituting an infringement of copyright. (16)

37.Likewise, in a case concerning the jurisdiction of the courts of the Member States in the event of an alleged infringement of copyright, the Court considered that the courts of a Member State in which copyrights are guaranteed must determine allegations of infringement of those rights, even where the alleged infringement of those rights is the result of acts carried out in another Member State, where the alleged damage may occur within the jurisdiction of the court seised. (17)

38.It follows from that case-law, taken as a whole, that the essential element that determines whether the proprietor of an intellectual property right may rely on that right against acts carried out abroad arises, in essence, from the fact that those acts, such as the sale, offer for sale or putting on the market of the goods concerned, target consumers located in the territory where the intellectual property right in question is protected.

39.Independently of the specific context of those judgments, the considerations relating to the remedies available to the proprietor of an intellectual property right in the event of an alleged infringement of that right by means of acts carried out abroad, outside the territory in which the right is protected, are cross-cutting in nature and therefore, in my view, capable of being transposed to the present case.

40.Likewise, in the present case, the third party who has used a sign identical with a national trade mark, without the consent of the proprietor of that trade mark, for goods identical with those in respect of which the trade mark is registered must be precluded from being able to oppose the application of Article 10(3)(b) of Directive 2015/2436 and thus to undermine the effectiveness of that provision by relying on the place where the goods are stocked, when he or she intends to offer them or put them on the market in the territory in which that trade mark is protected.

41.As the stocking of goods for the purpose of offering them or putting them on the market is one of the uses, within the meaning of Article 10(2) of Directive 2015/2436, that may be prohibited by the proprietor of a trade mark, that are expressly referred to in paragraph 3(b) of that provision, the proprietor of a national trade mark must, in my view, be able to oppose it, in application of the exclusive right conferred on him or her by the trade mark.

42.Article 10(3)(b) of Directive 2015/2436 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.

43.Since a relevant connecting factor with the national territory in which the trade mark is protected must exist, such an interpretation of that provision is consistent with the principle of territoriality. It is also consistent with the settled case-law of the Court, which has observed on numerous occasions that the exclusive right of the proprietor of the trade mark has been granted to enable him or her to protect his or her specific interests as proprietor of that mark, that is to say, to ensure that the trade mark may fulfil its specific functions. The exercise of that right must be confined to cases in which the use of the sign by a third party infringes or is capable of infringing the functions of the trade mark, which include its essential function of guaranteeing to the consumer or the final user the identity of origin of the product protected by the trade mark, by enabling him or her to distinguish that product, without possible confusion, from those having another origin. (18)

44.In the light of the foregoing considerations, I conclude that Article 10(3)(b) of Directive 2015/2436 must be interpreted as meaning that the proprietor of a national trade mark may prohibit a third party from stocking in another Member State goods that infringe his or her trade mark for the purpose of offering those goods in the country in which the trade mark is protected or of putting them on the market there.

The second question, concerning the concept of ‘stocking’

45.By its second question, the referring court asks whether Article 10(3)(b) of Directive 2015/2436 must be interpreted as meaning that in order for goods to be stocked for the purposes of that provision, the possibility of actually accessing the goods in infringement of the trade mark is required or whether the possibility of being able to influence the person with actual access to those goods is sufficient.

46.In the light of the meaning of the concept of ‘Besitz’ in German law, as is apparent from point 21 of this Opinion, the question must be understood as relating to whether ‘stocking’, within the meaning of Article 10(3)(b) of Directive 2015/2436 (‘besitzen’ in the German-language version), is to be understood only as ‘obtaining actual power’ over goods, so that it ceases when the stockist is no longer able to have actual access to those goods, or whether, as in German law, it also covers a situation in which a person ‘confers’ or ‘imposes’ a ‘right or an obligation in respect of possession’ of those goods on a third party, so that that person has decisive influence over that third party for the purpose of deciding on the destination of the goods.

47.According to settled case-law, both the uniform application of EU law and the principle of equality require that the terms of a provision of EU law which makes no express reference to the law of the Member States for the purpose of determining its meaning and scope must normally be given an autonomous and uniform interpretation throughout the European Union, which must be sought by reference to the context of the provision and the purpose of the rules in question. (19)

48.In addition, the need for a uniform interpretation of the various language versions of a provision of EU law also requires, in the case of divergence between those language versions, that the provision in question be interpreted by reference to the purpose and general scheme of the rules of which it forms part. (20)

49.Yet, Article 10(3)(b) of Directive 2015/2436 makes no reference to the law of the Member States for the purpose of determining its meaning and scope, and it is apparent from a comparative examination of the various language versions of that provision that there are certain divergences between them.

50.As the referring court has correctly observed, the Court considered the concept of ‘stocking’ in the judgment in Coty Germany. It was necessary, in particular, to determine whether the fact of stocking goods that infringe a trade mark right, without the person stocking them having himself or herself offered them for sale or put them on the market, and without that person having the intention of offering them for sale or putting them on the market, could be regarded as a ‘use’ of the trade mark, within the meaning of Article 9(1) of Regulation No 207/2009 and Article 9(1) and (2) of Regulation 2017/1001, and, in particular, as the act of ‘stocking’ those goods in order to offer them or put them on the market for the purposes of Article 9(2)(b) of Regulation No 207/2009, the substance of which is reproduced in Article 9(3)(b) of Regulation 2017/1001. (21)

51.In that regard, Advocate General Campos Sánchez-Bordona correctly stated that the term ‘possession’ does not appear in all the language versions of Article 9(3)(b) of Regulation 2017/1001. The French-language version (‘détenir’) and the German-language version (‘besitzen’) use vocabulary that is directly related to the legal concept of ‘possessio’. Other versions, such as the Spanish-, Italian-, Portuguese-, English- or Swedish-language versions (‘almacenarlos’, ‘stoccaggio’, ‘armazená-los’, ‘stocking’ and ‘lagra’), prefer verbs or nouns denoting the stocking of goods. (22)

52.Although in the judgment in Coty Germany the Court ultimately did not need to settle precisely what is to be understood by the concept of ‘stocking’, within the meaning of Article 9(3)(b) of Regulation 2017/1001, and focused on the commercial purpose of stocking goods ‘for the purposes of offering the goods or putting them on the market’, that judgment and the Court’s case-law provide useful markers for providing an answer to the question submitted in the present case.

53.As mentioned in point 30 of this Opinion, the stocking of goods bearing a protected trade mark is one of the ‘uses’ of the trade mark, within the meaning of Article 9(2) of Regulation 2017/1001 or Article 10(2) of Directive 2015/2436, that are listed in a non-exhaustive manner in paragraph 3 of those provisions, which the proprietor of an EU trade mark or a national trade mark may prohibit, provided that the purpose of the stocking of the goods is to offer the goods or put them on the market.

54.The Court has already had occasion to hold that, according to its ordinary meaning, the expression ‘using’ involves active behaviour and direct or indirect control of the act constituting the use. In that regard, it has observed that Article 9(2) of Regulation No 207/2009, and Article 5(3) of Directive 2008/95, the substance of which is reproduced in Article 10(3) of Directive 2015/2436, which list in a non-exhaustive manner the types of use which the trade mark proprietor may prohibit, refer exclusively to active behaviour on the part of the third party. (23) In that regard, the Court has pointed out that the purpose of Article 9 of Regulation No 207/2009 and of Article 5 of Directive 2008/95 is to provide the proprietor of an EU trade mark or a national trade mark with a legal instrument allowing him or her to prohibit, and thus to prevent, any use of that trade mark by a third party without his or her consent. However, only a third party who has direct or indirect control of the act constituting the use is effectively able to stop that use and therefore comply with that prohibition. (24)

55.The Court therefore considered various situations in which a third-party provider of services – an online market trader, advertiser or warehousekeeper – used a sign corresponding to a trade mark belonging to another person in order to determine whether that third party could be regarded as making ‘use’ of the sign.

56.The Court thus considered that operators of online market places, who offer storage services to sellers active on those market places and who do not themselves intend to offer the goods which they stock or to put them on the market do not make ‘use’ of the signs affixed to the goods stocked. The Court observed that the fact of creating the technical conditions necessary for the use of a sign and of being remunerated for that service does not necessarily mean that the person providing that service makes use of the sign. Unless a link can be established between the sign in question and the services provided by a third party service provider, the use is the act of the customers of the service provider. (25)

57.In addition, according to the Court, an advertiser cannot be held liable for the use of a sign where the advertisements are the actions of other economic operators, such as referencing website operators, who disregard the express instructions given by the advertiser who is seeking to avoid such use, or with whom the advertiser has no direct or indirect dealings and who do not act by order and on behalf of that advertiser, but on their own initiative and in their own name. Article 10(2) of Directive 2015/2436 cannot therefore be interpreted as meaning that a person may, independently of his or her conduct, be regarded as the author of the use of a sign identical with or similar to the trade mark of another person on the sole ground that such use could possibly provide a financial benefit to him or her. (26)

58.In the case of a warehousekeeper, who merely keeps goods for a third party in the ordinary course of his or her business, the Court also considered that the supply by him or her of the service of the storage of goods bearing another person’s trade mark does not constitute a ‘use’ of the sign. Intermediaries, such as warehousekeepers, who supply services to their customers, are therefore not liable for infringements of the trade mark rights which they might commit where they do not make use of the trade mark in their own commercial communications or in the course of their economic activities. The position is, however, otherwise in the case of an economic operator who sends to that warehousekeeper goods bearing a trade mark of which he or she is not a proprietor and has them stored with a view to releasing them for marketing. That economic operator must then be classified as a ‘[stocker] for those purposes’ within the meaning of Article 10(3)(b) of Directive 2015/2436. Were that not so, the acts of stocking for the purpose of placement on the market, referred to in that Article 10(3) and normally carried out without direct contact with potential consumers, could not be classified as ‘using’ within the meaning of that article and could not therefore be prohibited, even though the EU legislature has expressly identified them as capable of being prohibited. (27)

59.In order to determine whether there is a use by a third party of a sign identical with or similar to a protected trade mark, within the meaning of Article 10(2) of Directive 2015/2436, the Court therefore drew a distinction between providers of services, depending on the services which they offer and the behaviour in which they engage. A sign will not be used in that sense where the third party simply provides a technical solution necessary to enable a sign to be used or engages in passive behaviour without having any direct or indirect control over the act constituting the use. (28)

Conversely, a sign will be used, within the meaning of that provision, where the third party in question has direct or indirect control over the act constituting the prohibited use. That may involve a seller using online marketplaces to offer or put on the market goods bearing a trade mark of which he or she is not the proprietor, or indeed an economic operator who sends such goods to a warehousekeeper in order to be put them on the market and who uses the protected trade mark in his or her own business communications. (29)

It follows from all of the foregoing, first, that ‘stocking’ for the purpose of offering goods or putting them on the market is one of the uses expressly referred to in Article 10(3)(b) of Directive 2015/2436 that may be prohibited by the proprietor of a protected trade mark. Second, the Court has already stated, in essence, that an economic operator who sends to a warehousekeeper goods bearing a trade mark of which that economic operator is not the proprietor, in order to be put on the market, uses that trade mark and stocks the goods, within the meaning of that provision. I therefore consider that Article 10(3)(b) of Directive 2015/2436 confers on the proprietor of a protected national trade mark the right to take action against any third party having direct or indirect control over the stocking of the goods.

The fact of stocking goods with a view to offering them or putting them on the market must therefore be understood as including any situation in which the third party implicated by the proprietor of the protected trade mark either stocks the goods himself or herself 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 his or her 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.

Such an interpretation of Article 10(3)(b) of Directive 2015/2436 is also consistent with the objective of Article 10 of that directive, which consists in providing the proprietor of a trade mark with a legal instrument allowing him or her to prohibit, and thus to prevent, any use of his or her trade mark by a third party without his or her consent. As the Commission correctly observes, that interpretation makes it possible to ensure effective protection to a trade mark proprietor. If that were not so, the third party who indirectly exercises control via another person could avoid the legal consequences of Article 10(3)(b) of Directive 2015/2436, when he or she controls, albeit indirectly, the goods for the purpose of offering them or putting them on the market in the protected territory.

Accordingly, I conclude that Article 10(3)(b) of Directive 2015/2436 must be interpreted as meaning that stocking, within the meaning of that provision, includes being able to exercise decisive influence over the person having actual access to the goods in order to decide, even indirectly, on the destination of the goods.

Conclusion

For those reasons, I propose that the Court answer the questions for a preliminary ruling submitted by the Bundesgerichtshof (Federal Court of Justice, Germany) as follows:

Article 10(3)(b) of Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks

must be interpreted as meaning that:

–the proprietor of a national trade mark may prohibit a third party from stocking in another Member State goods that infringe his or her trade mark for the purpose of offering those goods in the country in which the trade mark is protected or of putting them on the market there;

–stocking, within the meaning of that provision, includes being able to exercise decisive influence over the person having actual access to the goods in order to decide, even indirectly, on the destination of the goods.

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Original language: French.

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Directive of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ 2015 L 336, p. 1).

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Judgment of 21 June 2012, Donner (C‑5/11, ‘the judgment in Donner’, EU:C:2012:370, paragraph 30).

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C‑567/18, EU:C:2019:1031, points 46 and 47.

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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).

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See the judgment in Donner (paragraph 27).

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See judgments of 17 November 2022, Merck Sharp & Dohme and Others (C‑224/20, ‘the judgment in Merck Sharp & Dohme and Others’, EU:C:2022:893, paragraph 112 and the case-law cited), and of 17 November 2022, Impexeco and PI Pharma (C‑253/20 and C‑254/20, EU:C:2022:894, paragraph 44).

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See, to that effect, recitals 5 to 8 of Regulation 2017/1001. See also judgment of 22 March 2012, Génesis (C‑190/10, EU:C:2012:157, paragraphs 30 and 31), and Opinion of Advocate General Jääskinen in Génesis (C‑190/10, EU:C:2011:202, points 31 to 33).

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See recital 5 of Regulation 2017/1001; see also Opinion of Advocate General Jääskinen in Génesis (C‑190/10, EU:C:2011:202, point 29), and, among other works, Wertheimer, H.W., ‘The Principle of Territoriality in the Trademark Law of the Common Market Countries’, International and Comparative Law Quarterly, 1967, Vol. 16, No 3, p. 630, and Dinwoodie, G. B., ‘Territorial Overlaps in Trademark Law: The Evolving European Model’, Notre Dame Law Review, 2017, Vol. 92, No 4, p. 1673.

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See, to that effect, judgments of 22 June1994, IHT Internationale Heiztechnik and Danzinger (C‑9/93, EU:C:1994:261, paragraph 22), and of 19 April 2012, Wintersteiger (C‑523/10, EU:C:2012:220, paragraph 25).

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See, to that effect, judgments of 7 December 2017, Coca-Cola v EUIPO – Mitico (Master) (T‑61/16, EU:T:2017:877, paragraph 81), and of 21 December 2022, International Masis Tabak v EUIPO – Philip Morris Brands (Representation of a pack of cigarettes) (T‑44/22, EU:T:2022:843, paragraph 78).

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See, to that effect, judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497, paragraphs 38, 41 and 42), making reference to Article 5(3) 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). That directive was replaced by Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks (OJ 2008 L 299, p. 25), which was itself replaced by Directive 2015/2436. Yet, Article 5(1), (2) and (3)(b) of First Directive 89/104 has not been significantly amended as regards its wording, its context or its objective by reference to the equivalent provision of Directive 2008/95 – Article 5(1), (2) and (3)(b) – and to that of Directive 2015/2436 – Article 10(1), (2) and (3)(b). It follows that references to the case-law relating to those provisions of First Directive 89/104 and of Directive 2008/95 remain relevant for the purposes of the interpretation of Article 10 of Directive 2015/2436.

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See judgment of 12 July 2011, L’Oréal and Others (C‑324/09, ‘the judgment in L’Oréal and Others’, EU:C:2011:474, paragraphs 62, 63 and 67), which concerned, in particular, goods situated in a third State outside the European Economic Area bearing a trade mark registered in a Member State of the European Union, which were advertised and offered for sale by an economic operator via an online marketing platform, without the consent of the proprietor of the trade mark, to consumers in the territory covered by the trade mark.

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See judgments in L’Oréal and Others (paragraphs 64 and 65 and the case-law cited), and of 5 September 2019, AMS Neve and Others (C‑172/18, EU:C:2019:674, paragraph 56).

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See, to that effect, judgment of 18 October 2005, Class International (C‑405/03, EU:C:2005:616, paragraphs 58 to 61), which concerned, in particular, the interpretation of Article 5(1), (2) and (3)(b) of First Directive 89/104 and Article 9(1) and (2)(b) of Regulation No 40/94; see also judgment of 1 December 2011, Philips (C‑446/09 and C‑495/09, EU:C:2011:796, paragraphs 56 to 58), which concerned goods capable of breaching exclusive rights conferred by registered models and certain copyrights and an EU trade mark, and in which the Court referred to the judgment in L’Oréal and Others and to the judgment of 18 October 2005 in Class International (C‑405/03, EU:C:2005:616). See also judgment of 6 February 2014, Blomqvist (C‑98/13, EU:C:2014:55, paragraphs 32 to 35).

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The judgment in Donner (paragraph 30). More specifically, the Court concluded that such a trader makes a ‘distribution to the public’ within the meaning of Article 4(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).

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See judgment of 3 October 2013, Pinckney (C‑170/12, EU:C:2013:635, paragraphs 43 to 47). The Court made clear that the court seised then has jurisdiction only to determine the damage caused within the Member State in which it is situated.

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See, to that effect, among other authorities, judgments of 27 October 2022, Soda-Club (CO2) and SodaStream International (C‑197/21, EU:C:2022:834, paragraphs 35 and 36); Merck Sharp & Dohme and Others (paragraph 45); and of 25 January 2024, Audi (Mounting element for an emblem on a radiator grille) (C‑334/22, EU:C:2024:76, paragraph 31).

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See, among other authorities, judgment of 13 October 2022, Gemeinde Bodman-Ludwigshafen (C‑256/21, EU:C:2022:786, paragraph 32 and the case-law cited).

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See judgment of 22 March 2012, Génesis (C‑190/10, EU:C:2012:157, paragraph 42 and the case-law cited).

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The judgment in Coty Germany (paragraph 35).

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See Opinion of Advocate General Campos Sánchez-Bordona in Coty Germany (C‑567/18, EU:C:2019:1031, point 46).

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See judgment of 3 March 2016, Daimler (C‑179/15, ‘the judgment in Daimler’, EU:C:2016:134, paragraph 40), ‘such as that of “affixing” the sign on the goods and their packaging or “using” it in business papers and advertising, “offering” the goods, “putting them on the market” or “stocking” them for those purposes, “importing” or “exporting” them or “offering” or “supplying” services under that sign’.

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See judgments in Daimler (paragraphs 39 to 41); of 25 July 2018, Mitsubishi Shoji Kaisha and Mitsubishi Caterpillar Forklift Europe (C‑129/17, EU:C:2018:594, paragraph 38); Coty Germany (paragraphs 37 and 38); and of 22 December 2022, Louboutin (Use of an infringing sign on an online marketplace) (C‑148/21 and C‑184/21, EU:C:2022:1016, paragraphs 27 and 28).

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See, to that effect, judgments of 23 March 2010, Google France and Google (C‑236/08 to C‑238/08, EU:C:2010:159, paragraphs 57 and 72); L’Oréal and Others (paragraphs 92, 102 and 103); of 15 December 2011, Frisdranken Industrie Winters (C‑119/10, EU:C:2011:837, paragraphs 29 and 32); and the judgment in Coty Germany (paragraphs 40 to 48), in which, moreover, the person storing the goods was not aware that it was storing goods that infringed the trade mark rights; see also order of 19 February 2009, UDV North America (C‑62/08, EU:C:2009:111, paragraph 47).

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See, to that effect, judgments in Daimler (paragraphs 34 to 36, 39 and 42), and of 2 July 2020, mk advokaten (C‑684/19, EU:C:2020:519, paragraphs 21 to 25).

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See, to that effect, judgment of 16 July 2015, TOP Logistics and Others (C‑379/14, EU:C:2015:497, paragraphs 42 to 45), referring to Article 5(3) of First Directive 89/104.

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See, to that effect, Opinion of Advocate General Campos Sánchez-Bordona in Coty Germany (C‑567/18, EU:C:2019:1031, point 39), which referred to Article 9(2) of Regulation 2017/1001.

29In that regard, see also, by analogy, the judgment in Donner (paragraph 27), in which the Court considered that a trader bears responsibility for any act carried out by him or her or on his or her behalf giving rise to a ‘distribution to the public’, within the meaning of Article 4(1) of Directive 2001/29, in a Member State where the goods distributed are protected by copyright. It added that any such act carried out by a third party may also be attributed to that trader where he or she specifically targeted the public of the State of destination and must have been aware of the actions of that third party.