Out-Law News 3 min. read

Third-party packaging fillers generally not liable for trade mark infringement, ECJ rules


Businesses that merely fill allegedly trade mark-infringing packaging are not themselves liable for any infringement, the European Court of Justice (ECJ) has ruled.

Drinks manufacturer Red Bull had argued that Winters, a Dutch company, had infringed its trade marks when filling drinks cans for a rival manufacturer. Red Bull had claimed that its competitor's cans displayed signs that infringed its trade mark rights and that Winters was liable for infringing those rights by filling the cans with their liquid content. However, the ECJ ruled that such activity did not constitute the 'use' of a trade marked sign and was therefore not prohibited under EU trade mark laws.

"It must be stated that a service provider who ... merely fills, under an order from and on the instructions of another person, cans already bearing signs similar to trade marks and therefore merely executes a technical part of the production process of the final product without having any interest in the external presentation of those cans and in particular in the signs thereon, does not itself ‘use’ those signs within the meaning of Article 5 of [the EU's Trade Mark Directive], but only creates the technical conditions necessary for the other person to use them," the ECJ said in its ruling.

"Moreover, 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 that article ... It is established that in the main action 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 said.

The ECJ said that whilst it was possible for third parties to be liable for trade mark infringement in helping to market an infringing sign, Winters had not been guilty of such an offence.

"The filling of cans bearing signs similar to 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 those signs," the ECJ ruled.

Under the EU's Trade Marks Directive owners of registered trade marks are "entitled to prevent all third parties not having his consent from using in the course of trade ... any sign where, because of its identity with, or similarity to, the trade mark and the identity or similarity of the goods or services covered by the trade mark and the sign, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association between the sign and the trade mark".

The Directive states that "affixing" infringing signs to goods or packaging, or "offering the goods, or putting them on the market or stocking them for these purposes under that sign, or offering or supplying services thereunder" was activity that "may be prohibited" use of an infringing sign. "Importing or exporting the goods under the sign" or "using the sign on business papers and in advertising" is also activity that the Directive states may be prohibited.

"[The 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 under that provision," the ECJ ruled.

The ECJ said that its ruling would not create a loophole in the law to allow companies to avoid liability for trade mark infringement by dividing the parts of their production process amongst service providers that are exempt from infringement.

"Contrary to the concerns of Red Bull and the [European] Commission, the finding that a trade mark proprietor cannot act, solely on the basis of [the Trade Mark Directive], against a service provider does not have the consequence of allowing the customer of that service provider to circumvent the protection given to the proprietor by that directive, by dividing the production process and by awarding different elements of the process to service providers. In that regard, suffice it to state that those services may be attributed to the customer who therefore remains liable under that directive," the ECJ said.

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