Supreme Court: mere filling of cans does not constitute trademark use

In 2010, in Red Bull v Frisdranken Industrie Winters (LJN: BK 4739), the Dutch Supreme Court (Hoge Raad) referred questions to the Court of Justice of the European Union (ECJ) for a preliminary ruling, including the following: "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?".

The questions asked by the Hoge Raad were answered by the ECJ in a judgment of December 15 2011, Frisdranken Industrie Winters BV v Red Bull GmbH (Case C-119/10).

Taking into consideration the judgment of the ECJ, the Hoge Raad unsurprisingly dismissed Red Bull's claim of trademark infringement (ECLI:NL:HR:2013:2057, December 20 2013). Frisdranken Industrie Winters BV was not instrumental in affixing the trademark on the cans, nor in distributing the filled cans to the public. Winters acted in accordance with the instructions of Smart Drinks by filling the empty cans. The cans, which had been supplied by Smart Drinks, already bore the trademark, and Winters produced an energy drink based on an extract supplied by Smart Drinks. Winters delivered the filled cans to Smart Drinks and was in no way involved in the marketing of the product (outside of the Benelux).

Under these circumstances, the ECJ - and now the Hoge Raad - held that Winters did not use Red Bull's trademark and, therefore, could not have infringed it.

Some commentators have argued that the interpretation of the ECJ is in contradiction with Article 11 of the IP Rights Enforcement Directive (2004/48/EC), which authorises the courts to enjoin an intermediary, whose services are used by others to infringe a trademark, from carrying on its activities. The judgment of the ECJ clarifies, however, that this is not possible in circumstances such as those in this case.

The judgment of the Hoge Raad is also of interest in that the court held that the winning party could seek reimbursement in full of the costs incurred during the proceedings before the ECJ.

Paul Steinhauser, Bloemendaal