1. Acts. The company Smart Drinks, Ltd. (Smart Drinks) commissioned Frinsdranken Industrie Winters BV (Winters) to fill some cans with a refreshing drink. The empty cans had previously been delivered by Smart Drinks to Winters and displayed several distinctive signs, some of them similar to the notorious RED BULL energy drink brand.
Red Bull GmbH (Red Bull) sued Winters before the Dutch courts for infringement of its RED BULL trademark. The question arises before the Court of Justice of the European Union whether the service of filling containers provided by a third party with a given sign constitutes use of the sign within the meaning of Article 5(1) of the First Trademark Directive. The Court of Justice answers in the negative.
2. Pronouncements. The Court of Justice of the European Union exempts Winters from liability for possible infringement of Red Bull's trademarks. In his opinion, Winters limited himself to executing a technical part of the production process of the final product, without having the slightest interest in the external presentation of the product packaging and, in particular, in the signs that appeared on it. In this regard, the court refers to what was stated in the ruling of March 23, 2010, Google France and Google (C-236/08 to C-238/08), in which it was stated that creating the necessary technical conditions The fact that a sign can be used and remuneration received for that service does not mean that the service provider himself makes use of the sign within the meaning of Article 5 of Directive 89/104.
As an additional circumstance that operates against the possible existence of an act of trademark infringement by Winters, the ruling adds that the necessary identity or application similarity between the RED BULL trademark registrations - which distinguish a drink - and the services would be missing. provided by said company, consisting of the filling of containers.
3. Comment. Red Bull and the European Commission had expressed their concern before the Court of Justice that trademark rights could be violated through the strategy of dividing the production process into several phases, entrusting them to different operators. The ruling expressly rejects this argument, maintaining that the protection of the trademark owner is guaranteed through the possibility of holding responsible for the acts of infringement the person who hires these successive tasks to obtain the final product that incorporates the infringing trademark. In view of this doctrine, it will therefore be necessary to adequately design the strategy to be followed by the trademark owner to exercise actions in defense of the trademark against whoever is truly responsible for the infringement.
Author Carlos Morán Medina
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