Judgment of the Court of Justice of August 1, 2025, Tradeinn Retail Services (C-76/24).
1. Facts
La empresa PH, titular de dos marcas registradas en Alemania, demandó ante los tribunales alemanes a la empresa española Tradeinn Retail Services S.L. (en adelante, TRS), ya que TRS ofrecía a través de su web y de la plataforma <Amazon.de> productos de buceo que incluían signos idénticos a las marcas registradas en Alemania por PH.
In that lawsuit, PH sought an injunction prohibiting TRS from using marks identical to its trademarks on both the products and their packaging, as well as from offering, manufacturing, distributing, or otherwise marketing or promoting those products.
In the first instance, the Landgericht Nürnberg-Fürth (Regional Civil and Criminal Court of Nuremberg-Fürth), after finding that TRS had partially infringed PH’s trademarks, ordered the cessation of the offering and promotion of products bearing a sign identical to PH’s trademarks. PH appealed that ruling to the Oberlandesgericht Nürnberg ( Higher Regional Court of Nuremberg, Germany).
The Nuremberg Higher Regional Court ruled on appeal that the products could also be considered to have been unlawfully stored in Spain, since the purpose of such storage was to offer and market them in Germany. Consequently, it ordered TRS to cease the promotion and sale of diving products bearing those marks, as well as their distribution and storage.
TRS filed an appeal against that judgment with the Bundesgerichtshof ( Federal Court of Justice, Germany), arguing that the appellate court’s ruling expanded the scope of the judgment handed down in the lower court.
Having examined the case and in light of the doubts arising from the interpretation of Article 10(3)(b) of Directive 2015/2436, the Bundesgerichtshof stayed the proceedings and referred two questions to the Court of Justice (CJ) for a preliminary ruling:
- whether the owner of a national trademark may prohibit the storage in another Member State of goods bearing an identical mark for the purpose of marketing them in the country where the trademarks are protected; and
- Whether, for the purposes of the regulation, indirect control is sufficient to constitute storage, or whether direct access to the products is required.
2. Statements
The Court of Justice’s answer to the first question referred for a preliminary ruling is that Article 10(3)(b) of Directive 2015/2436 must be interpreted as meaning that the proprietor of a trademark protected in one Member State is entitled to prohibit a third party from storing goods bearing a sign that is identical or similar to its own within the territory of another Member State, provided that the goods are intended to be offered or placed on the market in the Member State where the earlier trademark is protected.
With regard to the second preliminary ruling, the Court of Justice holds that the concept of storage encompasses not only cases of direct and effective control over the goods, but also indirect control, which involves the power to control or direct the persons who have direct and effective control over those goods.
3. Comment
The significance of the Court of Justice’s response to the preliminary rulings lies in the fact that the traditional commercial landscape—characterized by territorial unity—has been transformed by the emergence of the Internet and e-commerce platforms, where operators from different countries and territories are involved.
Consequently, this ruling strengthens the powers available to owners of national trademarks to prohibit a third party from another Member State from storing products bearing signs that are identical or similar to their national trademarks, provided that the marketing of such products is directed toward the Member State in which their trademarks are registered.
Likewise, the concept of storage—which could be interpreted differently depending on the languages of the Member States—is broadened. This establishes a broad concept that includes not only those who have direct physical control over the goods, but also those with indirect control—that is, those who exercise control or direction over the persons who have such direct control, such as intermediaries, logistics companies, etc.
In short, the Court of Justice’s ruling strengthens the practical scope of the rights of national trademark owners, since—although the principle of territoriality remains the cornerstone of the analysis of any potential conflict—all cross-border transactions involving multiple Member States are covered by the trademark owners’ right to prohibit such activities.
Patricia Gómez, Associate, Trademarks Practice Group