On 15 December 2011, the Court of Justice of the European Union (“ECJ”) handed down a judgment in Case C-119/10 between Frisdranken Winters BV (“Winters”) and Red Bull GmbH (“Red Bull”) regarding the protection of the latter’s famous trade mark RED BULL.
Winters acts as a bottler for, inter alia, Smart Drinks Ltd ("SD"), a company incorporated on the British Virgin Islands which sells products competing with Red Bull’s energy dinks. SD supplied Winters with empty cans bearing signs such as "Bullfighter", "Pittbull", "Red Horn" and "Live Wire". SD also furnished the basic concentrate for creating a carbonated beverage. Winters filled the cans with a specific quantity of the basic concentrate in accordance with the SD directions and recipes, added water and carbon dioxide and sealed the cans. It then warehoused the cans for SD to export the products outside the Benelux. Winters thus only performed the bottling service and did not dispatch the cans to SD. Winters did not supply or sell the cans to third parties.
Red Bull tried to stop this operation by bringing a cease and desist action with the District Court (Rechtbank) of ‘s-Hertogenbosch against Winters, relying on its Benelux trade mark rights. The case ended up before the Supreme Court of the Netherlands (Hoge Raad der Nederlanden) which referred a preliminary question to the ECJ. In essence, the Supreme Court wished to know whether the activities performed by Winters qualify as “use of a sign in the course of trade” within the meaning of Article 5 of First Council Directive 89/104/EEC of 21 December 1988 to approximate the laws of the Member States relating to trade marks (the “Trade Mark Directive”).
First, the ECJ recalled its judgment in the case Google France and Google (joined cases C-236/08 to C-238/08, See VBB on Belgian Business Law,, Volume 2010, No. 3, p.6, available at www.vbb.com), in which it decided that a company which provides, against payment, the technical conditions required for using a sign does not necessarily use that sign itself. Second, the ECJ pointed out that, in order for a trade mark holder to be entitled to act on the basis of Article 5(1)(b) of the Trade Mark Directive against a third party, it is required that the third party uses a sign identical with or similar to his trade mark for goods or services which are identical with or similar to those for which his trade mark is registered. Given that Winters essentially fills cans, which is not identical with or similar to the product or service for which Red Bull’s trade marks are registered, the ECJ found Red Bull could not invoke Article 5(1)(b) of the Trade Mark Directive against Winters. Consequently, the ECJ held in favour of Winters, mainly on the basis of the limited subcontracting role assumed by the company.
Finally, Red Bull expressed the concern that, if it could not act against the services provided by Winters, this would allow SD to circumvent the protection given by the Trade Mark Directive by dividing the production process and entrusting different elements of the process to service providers. The ECJ rejected this argument stating that it suffices that the services at hand can be attributed to Winters’ customer (namely SD) which therefore remains liable under the Trade Mark Directive.
