Higher Regional Court Düsseldorf: Providing a German return address for shipments of Chinese counterfeit goods can cause liability for trademark infringement
Facts of the case
A leading global sportswear manufacturer and proprietor of an EUTM successfully defended its rights against the distribution of counterfeit football jerseys within the EU before the Düsseldorf Higher Regional Court. Counterfeit goods were sold through various online shops, packaged by a Chinese logistics provider into single parcels, imported into the EU, and then delivered to consumers by a German parcel service.
However, the sportswear manufacturer did not target any of these companies but instead went after a German logistics provider (defendant) whose role was limited to allowing the Chinese logistics company to use its German address as both the sender’s and return address on the parcels. This was necessary because the German parcel service would only deliver parcels if a domestic address was indicated.
If a parcel reached the consumer and was not returned, the defendant never came into physical contact with the goods. The defendant only took possession of counterfeit items when parcels could not be delivered or were returned by customers.
Before initiating court proceedings, the sportswear company had ordered counterfeit products from an online shop, which were delivered with the defendant’s address printed on the parcel. The company informed the defendant about the infringing nature of the goods in writing. However, in a subsequent test purchase from another online shop, counterfeit goods were again delivered in a parcel bearing the same address.
Decision
The Higher Regional Court of Düsseldorf held that the defendant was liable under the German legal doctrine of “Störerhaftung” (secondary liability as an interferer) and ordered the defendant to cease-and-desist its contributory actions, to provide information about the origin of the goods, and to hand over counterfeit goods in its possession to a bailiff.
Although the defendant was not considered a direct infringer, the court held that it knowingly contributed to the trademark infringement once it had been notified that counterfeit goods were shipped in parcels bearing its address. Without the use of the defendant’s German address, the national parcel service would not have accepted or delivered the parcels to consumers. The court also emphasized that any branded goods shipped in single parcels from China must be assumed to be counterfeit since this was not the normal form of import of brand-name products.
The fact that the defendant never gained access to the goods if the parcels were successfully delivered did not exempt it from liability. According to the court, the defendant could at least have requested the names of the Chinese senders from its business partner, the Chinese logistics provider, after the trademark proprietor had informed it that counterfeit goods were shipped in parcels with its address on them. A simple internet search would have sufficed to learn that these senders were dealing with counterfeit products. The defendant would then have been obliged either to terminate the cooperation with the Chinese logistics provider or to reroute the parcels to its premises for inspection.
Takeaways
The judgment is a pleasant response to the increasing strategy of counterfeiters to import goods into the EU in single parcels to evade container inspections, which is a major challenge for trademark owners. Even if the actual infringers are located outside the EU, where European court decisions cannot be effectively enforced, brand owners are not left without protection. With comprehensive legal advice, alternative targets within the EU can often be identified, enabling swift and efficient enforcement.
HOYNG ROKH MONEGIER has extensive experience in the pan-European enforcement of trademark rights. We are ready to support you with our expertise in the determined fight against counterfeiting – starting with the identification of the parties involved and continuing with the development of the most effective enforcement strategy.
(Higher Regional Court Düsseldorf, case no. 20 U 9/25)