CJEU clarifies cross-border “stocking” and online offers under Article 10(3)(b) Trade Marks Directive (C 76/24)

Background

The CJEU’s recent judgment in Case C-76/24, Tradeinn Retail Services S.L. v PH, addresses two important questions for cross-border enforcement of trade mark rights in the EU, particularly in the context of online sales and logistics.

The dispute arose between PH, the proprietor of German trade marks for diving equipment, and Tradeinn Retail Services S.L. (“TRS”), a Spanish company. TRS advertised and sold diving accessories bearing signs identical to PH’s marks via its own website and Amazon.de, targeting German consumers. PH sought an injunction in Germany to prohibit TRS from using the marks, including stocking goods for the German market, even though the goods were physically located in Spain.

The German Federal Court of Justice (Bundesgerichtshof) referred two questions to the CJEU:

1. Can a national trade mark proprietor in one Member State prohibit a third party from stocking infringing goods in another Member State, if those goods are intended for sale in the country where the mark is protected?
2. Does “stocking” require direct access to the goods, or is it sufficient to have control over the person who has such access?

The CJEU’s Decision

1. Cross-border “Stocking” for Infringing Offers

The Court held that Article 10(3)(b) of Directive 2015/2436 must be interpreted as allowing the proprietor of a national trade mark protected in one Member State to prohibit a third party from stocking, in another Member State, goods under a sign in the circumstances referred to in Article 10(2), if the goods are intended to be offered for sale or put on the market in the Member State where the mark is protected.

Key points:

• The exclusive right conferred by a national trade mark is generally limited to the territory of registration (the “principle of territoriality”).
• However, the effectiveness of trade mark protection would be undermined if infringers could simply stock goods in another Member State and target consumers in the protected territory via online offers.
• The decisive factor is whether the offer for sale is targeted at consumers in the Member State where the mark is protected (e.g., via Amazon.de for German consumers).
• If so, the trade mark proprietor can also prohibit the stocking of those goods outside the protected territory, if it is a preliminary step to the targeted offer.

2. The Meaning of “Stocking”: Direct and Indirect Control

The Court clarified that “stocking” within the meaning of Article 10(3)(b) covers not only cases where the third party has direct and actual control over the goods, but also where the party has indirect but actual control—for example, by controlling or directing the person who has physical possession (such as a logistics provider or carrier).

Key points:

• The term “stocking” is interpreted functionally: what matters is the ability to control the goods’ destination and their offer for sale, not mere physical possession.
• This ensures that trade mark proprietors can obtain injunctions against economic operators who use intermediaries for storage or transport, preventing circumvention of trade mark rights.

Practical Implications

• For brand owners: The judgment strengthens the ability to enforce national trade mark rights against cross-border online sellers who use fulfilment or logistics services in other Member States.
• For online retailers and platforms: Care must be taken when targeting consumers in other Member States, as stocking goods outside the protected territory does not shield from liability if the goods are intended for infringing offers in the protected market.
• For logistics providers: While mere storage without knowledge or control may not be infringing, operators who act on instructions from sellers targeting protected markets may be caught by the ruling.

Conclusion

The CJEU’s decision in C‑76/24 is a significant development for cross-border trade mark enforcement in the EU, particularly in the age of e-commerce and distributed logistics. It closes a potential loophole for infringers and clarifies that both direct and indirect control over infringing goods can give rise to liability, even if the goods are physically located outside the protected territory.

For further advice on cross-border trade mark enforcement or online brand protection, please contact the Fieldfisher IP team.