Questions referred to ECJ on trademark use by can filler

Netherlands
In a dispute between Red Bull and Frisdranken Industrie Winters, the Hoge Raad, the Supreme Court of the Netherlands, has referred questions to the Court of Justice of the European Union (ECJ) for a preliminary ruling (LJN: BK 4739, February 19 2010).

In the underlying proceedings, Red Bull claimed that Winters infringed its famous RED BULL mark for energy drinks. In particular, it alleged that Winters was instructed by Smart Drinks Ltd, a rival energy drinks company established on the British Virgin Islands, to fill empty cans delivered by Smart Drinks with an energy drink. The cans bore the trademarks BULLFIGHTER and PITBULL, among others. The cans were then put at the disposal of Smart Drinks, which exported them to countries outside Benelux. Red Bull's lawsuit was directed only at Winters. 

The court of first instance issued an injunction preventing Winters from filling cans bearing the marks BULLFIGHTER and PITBULL. The Court of Appeal affirmed, holding that use of these marks infringed Red Bull's rights in the RED BULL mark. The court also held that because the cans were not destined to the Benelux public, the issue of whether there was a likelihood of confusion had to be assessed based on an abstract public.

On further appeal, the Hoge Raad decided to stay the proceedings and referred the following questions to the ECJ:
  • Can the mere filling of a can that bears a trademark be considered as use of that mark in the course of trade under Article 5 of the EU Trademarks Directive (2008/95/EC), even where such act is carried out on behalf of a third party with a view of distinguishing the products of that party?
  • Can such use of the mark be forbidden in Benelux if the products bearing the mark are destined exclusively for export to countries outside Benelux or outside the European Union and, therefore, cannot be perceived by the public within Benelux or the European Union?
  • In assessing whether infringement has occurred, which public should be taken into account? 
Paul Steinhauser, Arnold + Siedsma, Amsterdam

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