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Author Topic: Court of Justice of the European Union decision on tin cans  (Read 1053 times)


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Court of Justice of the European Union decision on tin cans
« on: September 27, 2014, 07:28:33 AM »

This is a somewhat funny press release.

Court of Justice of the European Union

Luxembourg, 15 December 2011
Press and Information
Judgment in Case C-119/10
Frisdranken Industrie Winters BV v Red Bull GmbH

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

A service providermerely creates thewho merely fills under an order from and ontechnical conditions necessary for the otherprotected trade mark
the instructions ofperson to use theanother person
sign similar to a
Frisdranken Industrie Winters BV (‘Winters’) is a Dutch undertaking which is mainly involved in the
‘filling’ of cans with drinks produced by itself or by others.
Red Bull GmbH produces and markets an energy drink under the trade mark RED BULL. It has
obtained international registrations for that trade mark, valid, inter alia, in the Benelux countries.
Winters filled cans with fizzy drinks on the instructions of Smart Drinks Ltd, a legal person under
the law of the British Virgin Islands, which is a competitor of Red Bull. For that purpose, Smart
Drinks supplied Winters with empty cans, delivered with matching lids and all bearing various
signs, some of which were similar to the trade marks of Red Bull. Smart Drinks also delivered to
Winters the extract contained in the fizzy drink.
Winters filled the cans with a specific quantity of the extract in accordance with Smart Drinks’
directions and recipes, added water and, if necessary, carbon dioxide, and sealed the cans.
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 claiming that Winters had infringed its trade
mark rights and seeking an order that Winters cease use of signs which are similar to its trade
marks. In that respect, the Hoge Raad der Nederlanden (Supreme Court of the Netherlands) asks
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 Directive1 even if that filling takes place as a service provided to and on the
instructions of another person.
The Court notes first that, under that directive, a trade mark proprietor is entitled to prohibit a third
party from using, without the proprietor’s consent, a sign identical with or similar to his trade mark
when that use is in the course of trade, is in relation to goods or services which are identical with,
or similar to, those for which that trade mark was registered and, due to a likelihood of confusion
on the part of the public, affects, or is liable to affect, the essential function of the trade mark, which
is to guarantee to consumers the origin of the goods or services.
The Court then considers whether, in the present case, a service provider such as Winters itself
makes ‘use’ of signs similar to the trade marks of Red Bull.
Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade
marks (OJ 1989 L 40, p. 1).
In that regard, the Court observes that the fact of creating the technical conditions necessary for
the use of a sign and being paid for that service does not mean that the party offering the service
itself uses that sign.
A service provider who merely fills, under an order from and on the instructions of another person,
cans already bearing signs similar to registered trade marks does not itself ‘use’ those signs within
the meaning of the Trade Mark Directive. Such a service provider merely executes a technical part
of the production process of the final product without having any interest in the external
presentation of the cans and in particular in the signs thereon and thus only creates the technical
conditions necessary for the other person to use them.
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.
As the Court has already stated, that expression generally applies to goods or services of third
parties who use the sign. However, in the present case, it is established that the service provided
by Winters consists of the filling of cans and that this service does not have any similarity with
the product for which Red Bull’s trade marks were registered.
It is true that the Court has already held, in the context of the provision of services online, that that
expression in the directive may, under certain conditions, include goods and services of another
person on whose behalf the third party acts. Thus, the Court considered that a situation in which
the service provider uses a sign corresponding 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 is
covered by that same expression when that use is carried out in such a way that it establishes a
link between that sign and that service2.
However, the filling of cans bearing signs similar to registered trade marks 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 which carries out the filling is not apparent to the consumer, which excludes any
association between its services and the signs.
Therefore, the Court holds that the Trade Mark Directive must 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 trade mark – does not itself make use of the
sign that is liable to be prohibited.
NOTE: A reference for a preliminary ruling allows the courts and tribunals of the Member States, in disputes
which have been brought before them, to refer questions to the Court of Justice about the interpretation of
European Union law or the validity of a European Union act. The Court of Justice does not decide the
dispute itself. It is for the national court or tribunal to dispose of the case in accordance with the Court’s
decision, which is similarly binding on other national courts or tribunals before which a similar issue is raised.
Unofficial document for media use, not binding on the Court of Justice.
The full text of the judgment is published on the CURIA website on the day of delivery.
Press contact: Marie-Christine Lecerf  (+352) 4303 3205
In particular, Case C-324/09 L’Oréal and Others, see also Press Release 69/11.
Steine kann man nicht essen!
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