CJEU gets Bullish: filling of packaging does not amount to trade mark infringement

In the recent decision of Frisdranken Industrie Winters BV v Red Bull GmbH, the Court of Justice of the European Union (“CJEU”) confirmed that the act of filling packaging which bears a potentially infringing trade mark does not constitute “use” of the trade mark to which the proprietor can object.

Red Bull is the owner of a number of registrations around the world for the trade mark RED BULL.  Smart Drinks Ltd, a competitor of Red Bull, engaged the services of Frisdranken Industrie Winters BV (“Winters”), based in Benelux, to fill pre-designed cans with competing energy drinks.  The cans bore a range of signs, namely BULLFIGHTER, PITTBULL, RED HORN and LIVE WIRE.  Winters filled the cans with energy drinks in accordance with the recipe and directions supplied by Smart Drinks.

Smart Drinks then exported and sold the cans to countries outside of Benelux.  Winters had no part in this process.

Red Bull brought trade mark infringement proceedings before the Benelux courts, alleging that Winters had infringed their trade mark registrations for RED BULL by the act of filling the cans with energy drinks.  In order to prove infringement, Red Bull needed to prove that they were the owner of a similar trade mark, that there was a likelihood of confusion and that this mark had been used by Winters in the course of trade. 

The Benelux court considered that the act of filling the cans could be considered a use of the trade mark which the proprietor was entitled to prevent, but held that only the BULLFIGHTER mark was similar to RED BULL.  Winters was therefore ordered to stop filling the BULLFIGHTER cans.

Following a series of appeals by both Winters and Red Bull, the Benelux appeal court referred a number of questions to the CJEU to ascertain whether the act of filling packaging which bears a sign which is similar to an earlier registered trade mark is use of the sign in the course of trade and which the trade mark proprietor is entitled to prevent.  The CJEU were specifically asked to consider whether Winters had “used” a similar trade mark in the course of trade.

The court determined that although it is clear that the act of filling cans under order from another person would constitute operating in the course of trade, it does not follow that the act could be seen as a “use” of the trade mark which the proprietor is entitled to prevent under Article 5(3) of the Trade Marks Directive.  It was held in the recent Google AdWords decision that simply creating technical conditions necessary to allow use of a sign and being paid to do this does not mean that the party offering such a service is using the trade mark. In this case, Winters was simply offering the service of filling the cans without having any commercial interest in the signs which were applied to the cans.

The CJEU therefore determined that by acting on an order to fill cans bearing signs which are similar to registered trade marks and by simply executing a technical process, Winters had not used the signs, but had only created the conditions required to allow Smart Drinks to “use” the signs in the course of trade, namely, to sell the cans containing the energy drinks.  The finding of infringement against Winters was consequently overturned.

Stephanie Burns
Trade Mark Group