Logistics case highlights brand owner options

Dr. Fabian Klein of Pinsent Masons was commenting after the Higher Regional Court of Düsseldorf ruled that a logistics provider was liable for infringing trade mark rights of a sports manufacturer after it helped infringing goods shipped from China reach customers in Germany.

Klein said the ruling builds on earlier case law relevant to other intermediaries such as online marketplaces and shows brand owners that there may be alternative options to effectively stop trade mark infringement than by pursuing original infringers.

Klein said: “In the recent past, we had the judgment of the Court of Justice of the EU (CJEU) against Amazon in a case brought by designer brand Louboutin relevant to online marketplaces. Then we also had the the so-called Hot Pot judgment by the Frankfurt Regional Court, which highlighted how other third-party intermediaries like persons responsible for product safety can be held responsible for IP infringements as well. Now, this judgment continues the trend of holding intermediaries accountable. For brand owners, this is a good sign, as the original infringers are often hard to litigate against.” 

In the Louboutin case, where trade mark rights relating to the red soles of Louboutin shoes in the EU and Benelux were being enforced, the CJEU ruled in late 2022 that online marketplace operator Amazon could be held responsible for counterfeit goods sold on its platform. Louboutin had sued Amazon in Belgium and Luxembourg, claiming that Amazon itself had infringed trade mark rights because it not only allowed infringing third-party offers on its website, but also provided additional services such as warehousing, shipping, and help with advertising.

In the case before the Düsseldorf court, the sports manufacturer took issue with the logistics provider over how she allowed other logistics companies based outside of the EU, including a company based in China, to use her address for dispatching goods to customers in Germany and as a return warehouse. Through test purchases, the sports manufacturer found that trade mark infringing goods – specifically, branded football strips – were being supplied to German customers through the logistics provider.

In 2024, the sports manufacturer obtained an injunction against the logistics provider. The logistics provider appealed against that earlier ruling before the Higher Regional Court of Düsseldorf.

The logistics provider argued before the court that the provision of her address was insufficient to show cause of trade mark infringement. She said she did not access parcels delivered directly to German customers and that it would be disproportionately burdensome on her business to expect her to audit every parcel that is forwarded through her. She said she reports clearly infringing consignments to the non-EU logistics companies so they can prevent further infringements by the sellers, and said that by the time she receives goods, any trade mark infringement will already have occurred.

The Düsseldorf court rejected the logistics providers’ appeal, holding that the conditions for a finding of third-party infringement under German law known as the Störerhaftung, and for the application of an injunction to remedy the situation, continue to be met.

Klein said: “It is noteworthy that the court did not get distracted by excuses such as the large number of parcels the logistics provider handles each day and that they allegedly were not aware of the contents of the parcels. It clearly found that the provider played an essential role in the fake products being shipped to Germany and that the provider could not just close its eyes to what it was participating in.” 

According to Klein, one specific side note from the court should not be overlooked: “Interestingly, the court stated that every parcel with a branded article which is received by an individual customer in the EEA but originates from outside the EEA can be regarded as an infringement.”

“It can be assumed that the brand owner did not agree to this route of commerce. Therefore, the trade mark rights on these products are not exhausted and brand owners can still object to these items being brought into the EEA. This could become an important comment by the court, because the Störerhaftung, on which brand owners otherwise would have to rely for claims against intermediaries, to some degree requires that the infringement is clear and does not need lengthy legal evaluation. The court might therefore have given an extra present to brand owners that could prove very useful in practice,” he said.