The Court of Justice of the European Union ("CJEU") has handed down its Judgment in Case C-119/10 Frisdranken Industrie Winters BV v Red Bull GmbH. In doing so, the CJEU has held that the act of simply filling packaging which bears a potentially infringing sign does not constitute use of that sign within the meaning of Article 5(1)(b) of the Trade Mark Directive.
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Summary
The Court of Justice of the European Union ("CJEU")
has handed down its Judgment in Case C-119/10 Frisdranken
Industrie Winters BV v Red Bull GmbH. In doing so, the CJEU
has held that the act of simply filling packaging which bears a
potentially infringing sign does not constitute use of that sign
within the meaning of Article 5(1)(b) of the Trade Mark
Directive.
Background
This case concerns a company called Smart Drinks Ltd,
incorporated in the British Virgin Islands, which produced a
competing product to the Red Bull energy drink.
Smart Drinks enlisted the services of Frisdranken Industrie Winters
BV ("FIW") to fill and seal cans with this competing
energy drink. Smart Drinks provided FIW with the empty cans and the
concentrate required to make up the drink. FIW made up the product
in accordance with Smart Drinks' instructions, sealed the cans
and placed them at the disposal of Smart Drinks. Smart Drinks then
exported these products to countries outside of Benelux.
The cans for these drinks bore the signs "PITTBULL",
"BULLFIGHTER", "RED HORN" and "LIVE
WIRE".
Red Bull GmbH ("Red Bull") sells drinks under the world
famous RED BULL trade mark and has numerous registrations worldwide
for such mark.
Red Bull issued proceedings in the Netherlands against FIW for an
order restraining FIW from using signs similar to Red Bull's
trade marks. The first instance court held that filling the cans
constituted use of the signs and that the sign
"BULLFIGHTER" was sufficiently similar to constitute an
infringement.
The parties appealed and cross-appealed this decision to the
Regional Court of Appeal.
The appeal court upheld the decision of the lower court with
respect to "use". It held that the act of putting the
drink product into the cans bearing the offending signs to create
the end product constituted affixing those signs to the product,
even if FIW was not responsible for affixing the signs to the cans
in the first place. The appeal court further held that the signs
BULLFIGHTER, PITTBULL and LIVE were all similar and were therefore
infringing.
FIW appealed this decision to the Supreme Court of the Netherlands.
The Supreme Court stayed the proceedings and referred the following
questions to the Court of Justice:
"1. (a) Is the mere "filling" of
packaging which bears a sign...to be regarded as using that sign in
the course of trade within the meaning of Article 5 of Directive
89/104, even if that filling takes place as a service provided to
and on the instructions of another person, for the purposes of
distinguishing that person's goods?
(b) Does it make any difference to the answer to question 1(a) if
there is an infringement for the purposes of Article 5(1)(a) or
(b)?
2. If the answer to question 1(a) is in the affirmative, can using
the sign then also be prohibited in the Benelux on the basis of
Article 5 of Directive 89/104 if the goods bearing the sign are
destined exclusively for export to countries outside (a) the
Benelux area or (b) the European Union, and they cannot - except in
the undertaking where the filling took place - be seen therein by
the public?
3. If the answer to question 2(a) or (b) is in the affirmative,
what criterion must be used when answering the question whether
there has been trade mark infringement: should the criterion be the
perception of an average consumer who is reasonably well-informed
and reasonably observant and circumspect in the Benelux or
alternatively in the European Union - who then in the given
circumstances can only be determined in a fictional or abstract way
- or must a different criterion be used in this case, for example,
the perception of the consumer in the country to which the goods
are exported?"
The CJEU
The CJEU held that:
"Although it is clear...that a service provider such as
[FIW] operates in the course of trade when it fills such cans under
an order from another person, it does not follow, however,
therefrom that the service provider itself "uses" those
signs within the meaning of Article 5 of Directive
89/104."
The CJEU reached this decision by analogy to the Google
France and Google cases (C-236/08 to C-238/08) where
it had already been held that "the fact of creating the
technical conditions necessary for the use of a sign and being paid
for that service does not mean that the party offering the service
itself uses that sign". Here, FIW's act of filling
and sealing the cans in accordance with a third party's
instructions merely constituted executing "a technical
part of the production process of the final product without having
any interest in the external presentation of these cans or the
signs thereon". Such an act did not, in the CJEU's
view, constitute "use" of the signs within the meaning of
Article 5.
In any event, the CJEU held that FIW did not use those signs for
goods or services which are identical with, or similar to, those
for which the Red Bull marks were registered within the meaning of
Article 5. FIW's service of filling the cans did not have any
similarity with the product for which Red Bull's trade marks
were registered. Following the Advocate General's Opinion, the
CJEU observed that "the filling of cans, bearing signs
similar to trade marks, is not comparable to a service aimed at
promoting the marketing of goods bearing those signs and does not
imply, inter alia, the creation of a link between the signs and the
filling service".
The Court therefore held that the conditions set out in Article
5(1)(b) were not met and therefore any discussion of Article 5(3)
was irrelevant.
There was no need for the CJEU to address the second and third
questions.
Comment
This decision provides some interesting guidance on
the meaning of "use" under Article 5 of the Trade Marks
Directive. While this may provide some comfort to companies
involved in the manufacturing process of products it is important
to note the extent to which FIW acted under the instructions of
Smart Drinks Ltd. The fact that the cans were delivered to FIW
ready printed and that FIW did not subsequently export or
distribute the end product would appear to be significant. Any
party providing more than "a technical part of the production
process" should still be wary of infringement.
The CJEU's Judgment on Case C-119/10 Frisdranken Industrie
Winter BV v Red Bull GmbH can be found here
This article was written for Law-Now, CMS Cameron McKenna's free online information service. To register for Law-Now, please go to www.law-now.com/law-now/mondaq
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The original publication date for this article was 16.01.2012.