On 1 August 2025, the Court of Justice of the European Union (CJEU) delivered its judgment in Case C-76/24 Tradeinn Retail Services S.L. v PH, which provided significant important clarification on the territorial and conceptual scope of the infringing act of "stocking" goods under Article 10(3)(b) of the Trade Marks Directive.

Background - territorial and conceptual question of infringing trade mark use

The case concerned PH, the proprietor of two German trade mark registrations for diving equipment, who initiated infringement proceedings against Tradeinn Retail Services (TRS), a Spanish company. TRS advertised diving accessories bearing signs identical to PH's marks on its website and on amazon.de. Whilst the goods were physically stored in Spain, they were offered for sale to consumers in Germany and other countries.

PH sought an injunction to prevent TRS from using the marks in Germany, including prohibiting TRS from stocking the goods for the purpose of offering them or putting them on the market.

The German Federal Court of Justice referred two questions to the CJEU concerning the interpretation of Article 10(3)(b):

• Can a national trade mark proprietor prohibit stocking of infringing goods in another Member State where those goods are intended to be offered or put on the market in the country of registration (the territorial question)?

• Does “stocking” require direct physical access to the goods, or is it sufficient to have control over the person with such access (the conceptual question)?

The CJEU's Decision – Court in in favour of broad trade mark protection

The Court answered both questions in favour of trade mark proprietors. As reported in a previous article (link) on Advocate General Spielmann's opinion of 27 March 2025, the AG had reached the same conclusions on both questions and the CJEU's judgment fully adopted the AG's reasoning.

(1) The Territorial Question

The CJEU held that the proprietor of a trade mark protected in one Member State may prohibit a third party from stocking goods in another Member State where those goods are intended to be offered for sale or put on the market in the Member State where the mark is protected.

The Court emphasised that whilst trade mark protection is generally limited to the territory of registration, a proprietor may prohibit offers targeted at consumers in that territory, even where the third party, server or goods are located elsewhere. To hold otherwise would allow operators using e-commerce to escape their obligations to respect trade mark rights, undermining the effectiveness of the Directive’s protection.

The Court noted that stocking under Article 10(3)(b) applies only where it constitutes a preliminary step to offering or putting goods on the market. Therefore, where a proprietor can prohibit an offer targeted at consumers in the protected territory, they may also prohibit the stocking of those goods outside that territory if the stocking is carried out for that purpose.

(2) The Conceptual Question

On the second question, the CJEU held that “stocking” covers not only cases where a third party has direct and actual control over goods, but also where they have indirect but nonetheless actual control through having control or direction over the person with direct control.

The Court reasoned that Article 10(3)(b) is intended to provide trade mark proprietors with a legal instrument to prohibit and bring to an end infringing conduct. Any third party with direct or indirect control over the infringing act must be regarded as being able to stop that use. If the provision applied only to those with direct control, it would be impossible for proprietors to obtain injunctions against economic operators who send goods to service providers for storage or transport, which would be incompatible with the Directive's purpose.

Practical Implications – clarity and protection of trade mark owners

This decision provides welcome clarity for trade mark proprietors and businesses engaged in cross-border e-commerce. Trade mark owners can now confidently enforce their rights against third parties who stock infringing goods outside their territory of registration, provided those goods are intended for their market. This is particularly relevant for online retailers who maintain centralised warehouses in one Member State but target consumers across multiple jurisdictions.

For businesses, the judgment underscores the importance of ensuring that goods offered for sale in any EU Member State do not infringe trade marks registered in that territory, regardless of where the goods are physically located. The broad interpretation of "stocking" to include indirect control means that businesses cannot avoid liability simply by using third-party logistics providers or warehousing services.

The decision reinforces that the principle of territoriality does not shield infringers who deliberately target consumers in a protected territory whilst keeping goods physically outside that territory. In the digital age, where cross-border trade is commonplace, this judgment ensures that trade mark protection remains effective and fit for purpose.