Filling of cans does not amount to trademark use

European Union
In Frisdranken Industrie Winters BV v Red Bull GmbH (Case C-119/10, December 15 2011), the Court of Justice of the European Union (ECJ) has held that the filling of cans that already bear a sign similar to a trademark does not constitute use of that sign in a way that can be prohibited by the trademark owner. 
Red Bull GmbH argued that Frisdranken Industrie Winters BV infringed its trademark rights by filling cans bearing signs similar to Red Bull's trademarks. Winters filled the cans with fizzy drinks on the instructions of Smart Drinks Limited. Smart Drinks supplied Winters with empty cans bearing signs which were confusingly similar to Red Bull's trademarks. Winters filled the cans and placed them at the disposal of Smart Drinks.
The Supreme Court of the Netherlands referred the case to the ECJ, asking if the mere filling of packaging which bears a sign similar to another person's trademark is to be regarded as using that sign in the course of trade within the meaning of Article 5 of the First Trademarks Directive (89/104/EEC). Red Bull and the European Commission argued that:
  • the use of a sign, within the meaning of Article 5 of the directive, includes the filling of packaging which bears a sign, even if the filling is carried out as a service, on the instructions of a client and for the purpose of distinguishing that person's goods; and
  • such filling should be considered equivalent to "affixing" the sign on the product.
The ECJ disagreed, highlighting that Article 5(1)(b) of the directive allows a trademark proprietor to prohibit use of an identical or confusingly similar sign when that use is in the course of trade and is liable to affect the essential function of the trademark, namely the guarantee of origin. Referring to Google France (Joined Cases C-236/08 to C-238/08), the ECJ stated that, even though Winters operated in the course of trade, this did not necessarily mean that Winters used the signs in question within the meaning of Article 5.
Furthermore, the ECJ stated that Winters did not use the signs "for goods and services" which were identical or similar to those covered by Red Bull's trademark. The service provided by Winters consisted of the filling of cans, and this service was considered dissimilar. 
The court's decision is bad news for trademark proprietors in cases where the company behind the infringement is located abroad and it is difficult to bring it to court. Moreover, companies providing services such as the filling of packaging within the European Union cannot be held liable for trademark infringement.

The ECJ did recognise that, where a service provider enables its customers to make use of signs similar to trademarks, its role cannot be assessed under the directive but must be examined, if necessary, from the point of view of other rules of law (this could refer to remedies under unfair competition law). From the point of view of trademark proprietors, however, it would have been more helpful if the ECJ had acknowledged that not only direct trademark infringement, but also contributory activities can constitute trademark infringement.  
Lisbet Andersen, Bech-Bruun, Copenhagen

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