Protection of national trademarks against stocking elsewhere within the European Union

CJEU clarifies that a national trademark holder can prevent a third party from stocking infringing goods in another Member State if those goods are intended for sale in the country where the trademark is protected

In a judgment of 1 August 2025 (C-76/24), the Court of Justice of the European Union (CJEU) clarified the scope of a trademark holder’s right to prevent a third party from stocking infringing goods in another Member State if those goods are intended for sale in the country where the trademark is protected.

 Facts and backgrounds

 PH is the owner of two German figurative trademarks registered for, inter alia, diving equipment. TRS, which is established in Spain, advertised, on its website www.scubastore.com and via the online trading platform www.amazon.de, the sale of diving accessories using signs identical to PH’s figurative trademarks at issue, in particular by means of photographs of goods bearing those signs.

PH brought an action before German courts seeking, inter alia, to prohibit TRS from using signs identical to his two German trademarks in Germany.

The main questions at issue were (i) whether the fact of stocking goods in Spain and offering them online to German consumers could amount to a trademark infringement and (ii) how the notion of “stock” must be interpreted.

Stocking goods in a Member State A for offering them online to consumers in Member State B can amount to a trademark infringement in Member State B

In line with the guidance from the CJEU’s judgment in Coty Germany (C-567/18), in order for the proprietor of a trademark to be able to prohibit the stocking of goods under that sign, the third party stocking those goods must itself pursue the aim of offering those goods or putting them on the market. This judgment did however not contain any express indication as to the possibility for the proprietor of a national trademark registered in one Member State, of preventing a third party from stocking goods under that sign, in the territory of another Member State.

After recalling the applicable principles to the online offering of goods, the Court underlined that the mere accessibility of a website in a Member State does not suffice to show that sale offers target consumers in that Member State: national courts must assess this case by case, taking into account factors such as where the goods can be delivered.

In this case, the goods offered by TRS on the online trading platform www.amazon.de under a sign identical to PH’s two German trademarks were directed at consumers in Germany, and the CJEU ruled that such offers may therefore fall within the scope of Article 10(3)(b) of Directive 2015/2436.

Therefore, the CJEU also ruled that the proprietor of a national trademark protected in one Member State (PH in Germany) may prohibit a third party (TRS) from stocking, in the territory of another Member State (Spain), goods under a sign in order to offer those goods for sale or to put them on the market in the Member State in which that mark is protected (Germany).

It is sufficient to have control or direction over the person with direct and actual control over the goods for being regarded as stocking them

By its second question, the referring court asked whether the notion of “stocking” goods under Article 10(3) of Directive 2015/2436 covers only direct possession of these goods or also situations where an undertaking exercises control or direction over the person who holds them.

After recalling that any third party who has direct or indirect control over the act constituting, inter alia, of the use of a sign identical to a trademark, must be regarded as being actually able to stop that use (Coty Germany, C-567/18), the CJUE found that the  term “stocking” in Article 10(3)(b) of Directive 2015/2436 covers not only cases in which the alleged infringer has direct and actual control over the goods concerned, but also those cases in which he or she has indirect but nonetheless actual control over them, i.e., he or she has control or direction over another person who has the direct and actual control over those goods.

Comments

The CJEU has departed from a literal and restrictive construction of “stocking” in art. 10(3)(b) of Directive 2015/2436 under the traditional territoriality principle by considering the purpose of the stocking and the need to ensure a more effective protection of the trademark. The CJEU has now clarified that a national trademark owner can prohibit a third party from stocking goods in another Member State if those goods are intended for sale or to be put on the market in the Member State in which the national trademark is protected.