Background
In the main proceedings, Tradeinn Retail Services S. L. (TRS), established in Spain, and PH, proprietor of German trade marks for diving equipment and accessories, disputed injunctive relief. TRS promoted and sold diving accessories under signs identical to the German marks, inter alia via its own website and the marketplace amazon.de.
Following decisions by lower courts, the German Federal Court of Justice (BGH) asked how “possession” of infringing goods should be interpreted—especially where stock is held in another EU Member State and where control is exercised indirectly via logistics/warehouse service providers.
Decision
The CJEU answered two key questions on the Trade Marks Directive (Directive (EU) 2015/2436) in a way that safeguards effective protection:
First, the proprietor of a trade mark protected in one Member State may prohibit a third party from possessing goods under an infringing sign in another Member State, where that possession is intended to offer the goods for sale or place them on the market in the protection state. In other words, “possession” is not confined to the protection territory if it is a preparatory step to an offer/marketing directed at that territory (e.g., online offers targeting consumers there).
Second, the Court clarified what it means to “possess” goods: it is sufficient that the third party has supervisory or managerial authority over the person who has direct and physical control of the goods. “Possession” therefore also covers indirect but actual control, not only the situation where the infringer physically stores the goods.
Relevance for e-commerce and supply chains
This decision is particularly important for cross-border online selling models (marketplaces, webshops, fulfilment, warehousing and logistics). The CJEU reiterates that online offers can be trade mark relevant even if servers or goods are located outside the protection state, provided the offer is directed at consumers in that state; mere website accessibility is not necessarily enough—indicators such as delivery areas matter.
To the point
- Trade mark owners may prohibit “possession” even where stock is held elsewhere in the EU, if intended for offering/marketing in the protection state.
- “Possession” does not require physical access—indirect control over warehousing/transport actors can suffice.
- In online trade, the key is whether offers/ads target consumers in the protection state; delivery information can be a strong indicator.
- Fulfilment/logistics structures do not automatically shield sellers from injunctions where the seller controls the distribution.
- Practically relevant for compliance in listings, stock setups and cross-border marketplace operations.
Source: Infocuria