Can a Benelux trademark owner take action against counterfeits sold online from abroad?

The rise of e-commerce has dramatically changed the way we do business and store. With a few clicks of the mouse, consumers in Belgium can order products from a webshop located anywhere in the European Union. This borderless digital marketplace offers enormous opportunities, but also creates complex legal challenges, especially in terms of intellectual property. What can you do as a Benelux trademark owner, for example, if a Spanish webshop sells counterfeit products to Belgian customers? A European Court of Justice judgment of August 1, 2025 (C-76/24) sheds new light on this.

The facts: a German trademark owner against a Spanish webshop

The case revolved around PH, the holder of several national German trademarks for diving equipment, and Tradeinn Retail Services (TRS), a Spanish company that sold diving accessories through several websites, including the German platform www.amazon.de. PH found that TRS offered products that infringed its trademark rights. These products were specifically targeted at German consumers, but TRS' physical stock was located exclusively in Spain.

The German courts were faced with a dilemma. On the one hand, in trademark law the territoriality principle: in principle, a German trademark is protected only on German territory. Acts that take place entirely in Spain, such as the storage of goods, are thus excluded. On the other hand, it was abundantly clear that TRS's sales activities were aimed at the German market, where PH's trademarks enjoy protection.

Germany's highest federal court, the Bundesgerichtshof, decided not to tie the knot itself and referred two crucial questions to the European Court of Justice.

Question 1: Is stock abroad also a trademark infringement?

The first question was key: can a trademark owner prohibit a third party from stocking infringing goods in another Member State (Spain) if those goods are intended to be sold in the Member State where the trademark is protected (Germany)?

The ECJ answered this question in the affirmative. The Court reasoned that the exclusive rights of a trademark owner, as set forth in Article 10 of the Trademark Directive (EU) 2015/2436, should provide the opportunity to protect the essential functions of the brand. One of those functions is to guarantee to consumers the origin of the products.

The Court reaffirmed its previous case law that the online offer of goods to consumers in a particular member state is sufficient to fall under the protection of that member state's trademark, even if the seller and the goods are physically located abroad.

The crucial step the Court now takes is to extend the reasoning to the act preceding it: stocking. The Court clearly states:

"The stocking of such goods by a third party is thus envisaged in that provision only to the extent that it is a prior condition for offering or putting on the market that can be prevented by the trademark owner."

In other words, if the online offering of goods in Belgium constitutes an infringement of a Benelux trademark, the trademark owner can also take action against the holding of stock of those goods in Spain, because that stock serves specifically for that infringing sale. This is an important strengthening of the position of trademark owners in the fight against cross-border online counterfeiting.

Question 2: What exactly does "having in stock" mean?

The German court's second question was more technical, but equally relevant. What if the Spanish webshop outsources the logistics? Does the webshop then still have the goods "in stock" within the meaning of the law? The German language version of the directive uses the word "besitzen" (possess), which can include both direct (physical control) and indirect possession. Other language versions, such as English ("stocking") or Spanish ("almacenar"), seem more indicative of physical storage.

The Court of Justice opts for a broad and pragmatic interpretation, focusing on the useful effect of the law. It is not required that the infringer physically holds the goods himself. It is sufficient that the person:

"... has supervisory or managerial authority over the person having direct and effective control over those goods."

Thus, an online retailer that outsources its inventory management and shipping to an external logistics partner (a so-called "fulfillment service") is still considered to have the goods "in stock." After all, this person is in control and orders the shipment. A narrow interpretation would make it too easy for fraudsters to avoid responsibility by setting up complex logistical arrangements.

What does this ruling mean for your business in Belgium?

This ruling is excellent news for Benelux trademark owners. It provides a more powerful weapon against online sellers operating from other EU member states and targeting the Belgian market with infringing products.

1. Expanded enforcement options: You can now not only challenge the online ad or sales offer in Belgium, but also demand that the underlying stock abroad be addressed. This can shut down the sale more effectively.
2. Addressing complex structures: The broad interpretation of "have in stock" ensures that you can target the ropey people behind the sale, even if they use outside warehouses, dropshipping models or other logistics providers.
3. Importance of targeted sales: The key remains demonstrating that the foreign webshop does indeed target Belgian consumers. Elements such as the ability to ship to Belgium, the use of the Dutch or French language, or Belgian payment methods are clear indicators here.

For online merchants, this ruling once again underscores the importance of thoroughly monitoring intellectual property rights in all countries of operation. Hiding behind a foreign company or warehouse is no longer a conclusive defense.