Brussels, 20/12/2011 (Agence Europe) - A service consisting of the mere filling of cans bearing a sign protected as a trade mark is not use of that sign which is liable to be prohibited.
This is the main substance of the European Court of Justice ruling in Case C-119/10. The case involved Frisdranken Industrie Winters BV (Winters), a Dutch undertaking that is mainly involved in the “filling” of cans with drinks produced by itself or by others. Smart Drinks, a competitor of Red Bull, supplied Winters with the extract contained in its fizzy drink, in accordance with Smart Drinks' directions and recipes, added water and, if necessary, carbon dioxide, and sealed the cans. It also provided empty cans, delivered with matching lids and all bearing various signs, some of which were similar to the trade marks of Red Bull. Winters then placed the filled cans at the disposal of Smart Drinks, which then exported them to countries outside the Benelux. In the present case, Winters only performed the aforementioned filling services on the instructions of Smart Drinks, and did not send the filled cans to that company. Nor did Winters deliver or sell the cans to third parties.
Red Bull brought an action before the Dutch courts seeking an order that Winters cease use of signs which are similar to its trade marks. The Supreme Court of the Netherlands asked the Court of Justice whether the mere “filling” of packaging which bears a sign similar to a protected trade mark must be regarded as “using that sign” in the course of trade within the meaning of the Trade Mark Directive 89/104/CEE even if that filling takes place as a service provided to and on the instructions of another person.
The Court states that in this case, Winters does not make use of the signs in question itself in the sense of the directive and simply executes a technical part of the production process for the final product, without having the slightest interest in the external presentation of the cans or the signs that are already on these cans. Moreover, the Court goes on to state that a service provider in Winters' situation does not, on any view, use those signs “for goods or services”, which are identical with, or similar to, those for which the trade mark was registered, within the meaning of the Trade Mark Directive. The filling of cans is not, by its very nature, comparable to a service aimed at promoting the marketing of goods bearing those signs and does not imply, inter alia, the creation of a link between the signs and the filling service. The undertaking that carries out the filling is not apparent to the consumer, which excludes any association between its services and the signs. (FG/transl.fl)