National trademark
works
across borders.
National trademark
works
across borders.
from
Can a German trademark owner take action against an online retailer based in another EU country if the latter has infringing goods there? Or is the trademark owner unprotected due to a lack of laws in the country?
What is it all about?
On August 1, 2025, the European Court of Justice issued a landmark decision on trademark law that redefines the relationship between territorial property rights and cross-border online trade. Under certain circumstances, German trademark owners will in future be able to prohibit third parties from owning infringing goods in other EU member states – provided that these goods are intended for the German market.
Background to the case
The legal dispute arose from a typical cross-border e-commerce conflict that occurs on a daily basis in the EU single market. The German trademark owner PH owns registered word and figurative trademarks for diving equipment and diving accessories, which are registered with the German Patent and Trademark Office. These trademarks protect various products such as diving suits, diving gloves, diving masks and breathing apparatus for diving.
The Spanish company Tradeinn Retail Services used signs that were identical to these German trademarks to advertise and sell diving accessories. The company used both its own website and the German Amazon platform amazon.de. The advertised goods were physically located in Spain and were sent to customers from there, but the sales offers were specifically aimed at German consumers.
This constellation led to a complex legal issue:
Can a German trademark owner take action against a Spanish company that is based in Spain and stores its goods there, but specifically targets German customers?
The Regional Court of Nuremberg-Fürth initially affirmed this and ordered Tradeinn Retail Services to refrain from offering and advertising the trademark-infringing goods. The Nuremberg Higher Regional Court went even further and extended the prohibition to include possession of the goods “for the aforementioned purpose” – i.e. to offer or market them in Germany.
The ECJ ruling in a nutshell
The European Court of Justice ruled Judgment of 01.08.2025 – Ref. C-76/24 two fundamental legal issues that are likely to be of great importance for the future of trademark law in the digital single market.
Territoriality meets online reality
The first and probably most important question concerned the relationship between the territoriality principle of trademark law and the cross-border possibilities of online trade. Traditionally, the protection of a national trademark is limited to the territory of the Member State of registration. A German trademark owner can normally only take action against infringements that take place in Germany.
However, the ECJ recognized that this strict territorial view no longer reflects the reality of the digital single market. If a company specifically targets German consumers via German online platforms, it cannot claim that its goods are physically located outside Germany. The Court argued that online offers on platforms such as amazon.de are recognizably aimed at German consumers and are therefore subject to German trademark law.
This realization led to a remarkable expansion of the enforcement options for trademark owners. If the offering of goods can be legally prohibited in Germany, it must also be possible to prohibit the upstream possession of these goods – regardless of where they are physically located. Otherwise, online retailers could avoid any obligation to observe trademark rights by cleverly relocating their warehouse locations. This would undermine the practical effectiveness of European trademark protection.
Indirect ownership as a connecting factor
The second key question concerned the definition of the term “possession” in the EU Trade Mark Directive. The different language versions of the Directive use different terms: While the German version speaks of “besitzen” and the French of “détenir”, other language versions use terms that refer more to storage, such as the English “stocking” or the Spanish “almacenar”.
The ECJ clarified that these linguistic differences must not lead to different legal effects. The decisive factor is that any person who has direct or indirect control over a trademark infringing act must actually be able to put an end to that use. Therefore, the term “possession” includes not only direct and actual control over the goods, but also indirect possession through the exercise of supervisory or managerial authority over the person who has direct control.
This interpretation has far-reaching practical consequences. An online retailer can no longer claim that it has handed over the goods to a logistics service provider and thus relinquished direct control. As long as it has contractual or actual influence over the warehouse keeper, it remains liable as the indirect owner.
Significance for companies
Extended options for trademark owners
The decision opens up completely new enforcement strategies for German and other national trademark owners. Previously, they had to limit themselves to taking action against acts of infringement that took place in their territory of protection. Now they can also take action against preparatory acts in other EU Member States, provided that these are clearly directed at their territory of protection.
This is particularly relevant for combating online trademark infringements. Trademark owners no longer have to stand idly by and watch their laws being infringed via foreign online platforms simply because the goods are physically located outside their territory of protection. They can now target the entire logistics chain and also take action against warehouse keepers, fulfillment service providers and other indirect owners.
However, the prerequisite remains that the goods are recognizably intended for the German market. Indications of this are German domain endings, German-language websites, the indication of delivery areas in Germany, the use of German currency or targeted marketing for German consumers. Purely transit goods with no connection to Germany remain protected.
New challenges for online retailers
The decision brings with it considerable new liability risks for online retailers operating across borders. The physical location of the goods no longer offers protection against foreign trademark rights if the sales offers are aimed at consumers in other EU member states. This applies both to own online stores and to sales via marketplaces such as Amazon, eBay or other platforms.
In future, online retailers will have to extend their trademark law checks to all target markets, not just the location of their company headquarters. Anyone wishing to supply German consumers must observe German trademark rights – regardless of where the company or the goods are located. This requires a fundamental overhaul of many companies’ existing compliance strategies.
At the same time, online retailers must also review their contracts with logistics service providers. As indirect owners can also be held liable, there is a risk that warehouse keepers or fulfillment service providers will take recourse if claims are made against them for trademark infringements.
Effects on logistics and fulfillment
Logistics companies, warehouse keepers and other fulfillment service providers are confronted with completely new liability risks. The ECJ’s decision makes it clear that they can also be held liable as indirect owners for trademark infringements if they store or transport trademark-infringing goods.
This applies in particular if they have a certain degree of supervisory or management authority over the goods. This requirement is less likely to be met for pure transportation services than for longer-term storage contracts where the service provider is actively involved in the processing of orders.
Logistics companies will therefore have to rethink their due diligence obligations and possibly introduce preventive trademark law checks. At the same time, contractual protection against clients will become even more important in order to be able to assert recourse claims in the event of trademark infringement proceedings.
Focus on platform responsibility
Online marketplaces and platform operators face the challenge of sensitizing their notice-and-takedown procedures to the new legal awareness. While they are still not obliged to actively search for trademark infringements, they must respond appropriately to notices from trademark owners.
The extended territorial scope of trademark rights means that in future platforms will also have to remove offers that originate from traders in other EU countries but infringe national trademark rights in the target market. This may require an adaptation of automated detection systems and better training of employees in the area of trademark law.
Conclusion
The ruling offers new opportunities for owners of national trademarks. In future, trademark owners will also be able to take action against the mere possession of infringing goods in other EU countries, even if no trademark rights exist there. The only requirement is that these goods are to be brought into the country in which national trademark protection exists. Previously, it was only possible to prohibit offers in Germany, but not possession abroad.
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