No more dodging the bullet: Red Bull obtains injunction against intermediary

The Commercial Court of Brussels has held that NV Konings had infringed the trademark rights of Red Bull GmbH by filling cans bearing the mark BULLET with an energy drink.

Red Bull introduced a claim against Konings, a Belgian company which filled with an energy drink empty cans bearing the mark BULLET supplied by a third party:

The main question was whether Red Bull, the owner of the trademark BULLIT, could object to the filling services of an intermediary acting on the instructions of a third party.

On September 26 2012 the president of the Commercial Court of Brussels held that it was apparent that use of BULLET infringed the BULLIT mark; however, the mere filling of cans could not be regarded as trademark use in the sense of the trademark law. Therefore, the filling activity, as such, did not amount to trademark infringement. This decision is in line with a preliminary ruling delivered by the Court of Justice of the European Union on December 15 2011 in another case involving Red Bull (Winters v Red Bull (Case C-119/10)). In that case, it was held that Article 5 of the First Trademarks Directive (89/104/EEC) had to be interpreted as meaning that:

“a service provider who, under an order from and on the instructions of another person, fills packaging which was supplied to it by the other person who, in advance, affixed to it a sign which is identical with, or similar to, a sign protected as a trademark, does not itself make use of the sign that is liable to be prohibited under that provision”.

However, in the present case, Red Bull had additionally invoked Article 11 of the IP Rights Enforcement Directive (2004/48/EC), claiming that Konings had to be regarded as an intermediary “whose services are used by a third party to infringe an intellectual property right”. The court held that, although Konings did not infringe Red Bull's trademark because it did not use the BULLET mark, it was nevertheless liable as an intermediary since:

• the term 'intermediaries' in the IP Rights Enforcement Directive must be interpreted broadly and applies to all services, regardless of their nature (online or offline);
• the filling service commissioned by the principal was a technical requirement that made it possible for the latter to infringe Red Bull's trademark, either by subsequently exporting the finished cans from the Benelux or by selling them; and
• it was not necessary that the intermediary be aware of the alleged infringement by the third party using its services.

The court thus ordered that Konings cease the infringing activities.

It is clear that injunctions or cease and desist orders against intermediaries help to prevent abuse and are a powerful tool in the enforcement of IP rights. Considering that the actual infringers are often invisible or unidentifiable, filing suit against such intermediaries may be the best way to bring the infringing activities to an end. Therefore, undertakings seeking to infringe the trademarks of others will not be able to dodge the bullet by dividing the production process of infringing goods and by hiring third parties to commit acts contributing to the actual infringement.

While the services provided by intermediaries - such as internet service providers, transporters of counterfeit goods or even the landlord of a warehouse where those goods are stored - may not be prohibited on the grounds of trademark infringement, the same result can be achieved by obtaining an injunction against such intermediaries on the basis of contributory trademark infringement.

The decision will not be appealed. A link to the English translation of the decision can be found here.

Paul Maeyaert and Jeroen Muyldermans, ALTIUS, Brussels

The authors represented Red Bull GmbH in this case