Netherlands: Yes You Can: The Mere Filling Of Packagings Bearing Infringing Marks Does Not Qualify As Trade Mark Use

This last Newsflash of 2011 deals with drinks and relates to the decision of the Court of Justice of the European Union on the filling of packaging bearing infringing marks. Mere filling does not qualify as trade mark use, says the Court.

On 15 December 2011, the Court of Justice of the European Union has rendered an important ruling regarding the concept of trademark use under the European Trade Marks Directive, in response to questions from the Supreme Court of the Netherlands.

Background of the case

Smart Drinks, an energy drinks manufacturer and rival of Red Bull, instructed Winters to fill cans with soft drinks. Smart Drinks provided Winters with the cans, preprinted with marks such as BULLFIGHTER and PITTBULL (resembling Red Bull's marks), and the extract of the energy drink. Winters filled the cans with the extract, water and carbon dioxide in accordance with the instructions of Smart Drinks and then delivered the filled cans to Smart Drinks, which then exported them to countries outside the Benelux territory. Winters had thus only rendered filling services for Smart Drinks.

In the Dutch proceedings Red Bull claimed that Winters infringed its famous RED BULL mark for energy drinks and this was contested by Winters. The court of first instance and the Court of Appeal held that the filling services did in fact amount to trade mark use of the marks BULLFIGHTER and PITBULL, by 'affixing' those signs to the goods within the meaning of Article 5(3)(a) of the Directive, which infringed Red Bull's trade mark rights.

The Dutch Supreme Court in its turn referred to the CJEU asking, in essence, whether the mere filling of cans by order of a third party amounts to such use.

The CJEU's decision

The CJEU first of all found that a service provider who, like in the case of Winters, merely performs filling services under an order from and on the instructions of another person, merely executes a technical part of the production process of the final product.

Therefore the service provider does not itself 'use' those signs within the meaning of the Directive according to the CJEU. Such provider only creates the technical conditions necessary for the other person to use the signs, without itself having any interest in the external presentation of those cans and in particular in the signs thereon.

Secondly, a service provider such as Winters does not, in the CJEU's view, use those signs 'for goods or services' identical with, or similar to, those for which the trade mark was registered, within the meaning of that article.

The CJEU clearly distinguishes Winter's situation from the providing of online services. In respect of the latter services, the Court had previously ruled that the expression "goods and services" may, under certain conditions, include goods and services of another person on whose behalf the third party acts, i.e. when the service provider uses a sign identical or similar to the trade mark of another person in order to promote goods which one of its customers is marketing with the assistance of that service and the use is carried out in such a way that it establishes a link between that sign and that service (referring to inter alia the Google France and Google decision).

According to the Court however, the filling of cans cannot be compared to a service aimed at promoting the marketing of goods bearing those signs. The main difference is the lack of creation of a link between the signs and the filling service: as the provider of filling services is not apparent to the consumer, there can be no association between its services and those signs.

Conclusion: 'filling' is not use

Thus, according to the interpretation of the CJEU, a service provider who, under an order from and on the instructions of another person, fills packaging 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 trade mark does not itself make use of the sign. The question remains whether such activities could not amount to contributory or indirect infringement, an issue that is not dealt with under the Directive and, for the moment, can only find an answer in national law.

The IP Team of NautaDutilh wishes the readers of its newsflashes Merry Christmas and a Happy New Year!!

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