By Ashley Moniz
The European Court of Justice (ECJ) recently found that Amazon, as an online retail outlet, was not liable for trademark infringement after unwittingly storing third-party goods that were infringing.The German unit of Coty, an American cosmetics company, brought the action against Amazon when a third-party seller advertised grey market DAVIDOFF cologne for sale.
The third-party vendor used Amazon Marketplace under the "Fulfilled by Amazon" scheme to stock and sell their goods. Under this scheme, vendors pay a fee to use Amazon’s warehouses and logistics. Even though Amazon owns this platform, the ECJ found that Amazon did not itself sell the infringing goods but merely stored them, and therefore was not liable for trademark infringement.
The ECJ found that the storage of goods without knowledge that the goods infringe trademark rights does qualify as 'trademark use'.
For more information about protecting your intellectual property rights (and preventing the infringement of third party rights!) in international e-commerce channels, please contact us.
In the recent Canadian case Ontario (Energy) v Quality Program Services Inc, the Federal Court held that governmental agencies using official marks could be liable for infringement of a prior trademark owner’s rights.
Official Marks are unique to Canada. They are a type of mark that may only be owned by a Canadian public authority such as government agencies. Once public notice is given of an Official Mark, use of the Official Mark by third parties is prohibited under the Act. Official Marks cannot be opposed by third parties or cancelled for non-use. T
The Federal Court has now clarified that a public authority that uses a mark confusing with a registered trademark does so at its peril as a finding of infringement may be made. This is an interesting limitation on the broad scope of protection normally thought to apply to Official Marks.
For more information concerning Official Marks, trademark protection (and clearance searches to avoid infringement claims!) please contact us.