Advocate General Spielmann has provided guidance on the territorial and conceptual scope of the infringing act of "stocking" goods bearing another person’s registered trade mark, for the purposes of offering them or putting them on the market, under Article 10(3)(b) of the Trade Marks Directive 2015 (Case C-76/24 Tradeinn Retail Services S.L. v PH (ECLI:EU:C:2025:220) (27 March 2025)). 

Facts

The claimant, an individual named "PH", owned the following two German trade mark registrations (the Marks). 

The Marks were registered, among other goods and services, for "diving equipment, diving suits, diving gloves, diving masks and breathing apparatus for diving".

The defendant (TRS) was a Spanish company, which offered diving equipment and accessories for sale on its website (www.scubastore.com) and on www.amazon.de.

On these platforms, TRS advertised certain diving accessories for sale bearing the Marks. These goods were stored in Spain, but were offered for sale in multiple countries, including Germany.

PH brought an infringement action before a German court, requesting an injunction to prevent TRS from using the Marks in the course of trade in Germany for diving accessories. In particular, PH sought to prevent TRS from: 

• affixing those signs to diving accessories, their presentation or packaging; and
• offering, manufacturing, distributing or otherwise putting diving accessories bearing those signs on the market, and promoting or stocking them for those purposes.

Relevant law

Under Article 10(2) of the Trade Marks Directive 2015 (the Directive), it is an act of trade mark infringement for a party to use, in the course of trade, in relation to goods and services, signs which are identical or confusingly similar to, or which take unfair advantage of the reputation of, a registered trade mark, without the owner’s consent.

Examples of "use" are set out in Article 10(3) of the Directive, and include "offering the goods or putting them on the market, or stocking them for those purposes, under the sign…" (Article 10(3)(b)).

The German court reference

The German Federal Court of Justice referred two questions to the Court of Justice of the European Union (CJEU), on the territorial and conceptual scope of the infringing act of "stocking" under Article 10(3)(b) of the Directive. 

These can be summarised as follows:

1. Could the owner of a national trade mark registration prohibit a person in another country from stocking goods that infringe that trade mark, for the purpose of offering those goods or putting them on the market in the country of registration (the territorial question)?
2. Does the concept of "stocking" depend on the possibility of actually accessing the infringing goods, or is the possibility of being able to influence the person with actual access to those goods sufficient (the conceptual question)?

The Advocate General’s opinion

Advocate General Spielmann (the AG) gave his opinion, answering as follows.

(1) The territorial question

In the AG’s view, the answer to this question was yes. 

The AG derived, from the relevant case law as a whole, that the key factor that determined whether an IP right-holder in one territory could enforce that right against infringing acts carried out in another territory (e.g. offering the goods for sale or putting them on the market), was whether there was targeting of consumers located in the territory where the right was protected. 

Applying that principle to this case, the AG stated that a third party who carried out the infringing act of stocking, under Article 10(3)(b), could not rely on the place where the goods were stocked, when that person intended to offer them or put them on the market in the territory where the trade mark was protected. 

Therefore, Article 10(3)(b) was to be interpreted as protecting a national trade mark against the stocking of an infringing product outside of that territory, where this was for the purpose of offering that product or putting that product on the market in that territory. 

(2) The conceptual question

In the AG’s view, the answer to this question was that "stocking" included not just the possibility of actual access to the goods, but also the possibility of influencing the person with such access; to hold otherwise would impede the effectiveness of Article 10(3)(b).

The AG had viewed this question through the distinction, in German law, between direct possession (actual power over an object, which ceased when that power was given up or lost), and indirect possession (no actual power over the object, but a right or obligation to possess that object which arose through a relationship with a third party, such that that person could exercise decisive influence over that third party). 

The AG stated that the act of "stocking" was an act of "using" an infringing sign under Article 10(2). According to its ordinary meaning, the expression "using" involved active behaviour and direct or indirect control of the act constituting the use. Only a third party who had such control was able to cease the use at the request of the right-holder. 

The AG noted that case law on the definition of "using" under Article 10(2), had distinguished between: 

• third parties who simply provided a technical solution necessary to enable a sign to be used (e.g. online marketplace providers), or engaged in passive behaviour without having any direct or indirect control over the act constituting the use (e.g. warehouse keepers); and
• third parties who had direct or indirect control over the act constituting the use (e.g. the seller using the online marketplace to offer or put the goods bearing the infringing signs on the market, or the economic operator sending such goods to the warehouse keeper for those purposes).

The AG therefore considered that Article 10(3)(b) entitled the owner of a national trade mark registration to take action "against any third party having direct or indirect control over the stocking of the goods". This included any situation in which the third party either:

1. stocked the goods themselves, for the purpose of offering them or putting them on the market in the territory in which the trade mark was protected; or
2. had the goods stocked on their account by another person for those purposes, and had "decisive influence" over that person (in that the third party could decide, even indirectly, on the destination of those goods).

Taking stock

The AG’s opinion is not binding on the CJEU. However, it offers welcome and common-sense guidance on the territorial and conceptual scope of the infringing act, under Article 10(3)(b), of "stocking" goods bearing an infringing sign.

Both findings reinforce the need to ensure that Articles 10(2) and 10(3)(b) remain effective, instead of being circumvented by such easily contrived arrangements - for example, merely stocking the goods in question in another territory while still targeting consumers in the protected territory, or using another person to stock the goods for those purposes while exercising such decisive influence over that person as to determine the destination of those goods. 

If adopted by the CJEU, these findings will therefore provide welcome clarity in the EU, both for trade mark proprietors and prospective stockists.