Last Friday, 19 February 2010, the Supreme Court of the Netherlands has referred to the European Court of Justice for a preliminary ruling regarding three questions on the interpretation of the concept of trade mark use within the meaning of article 5 of the Trademarks Directive. Under this provision, the owner of a trade mark can oppose to the use of his mark (or a similar sign) if by such use a likelihood of confusion exists on the part of the public, which includes the likelihood of association between the sign and the trade mark.

Proceedings before the lower courts

In the proceedings at first instance, the President of the District Court of 's-Hertogenbosch partially allowed Red Bull's claims and ordered Winter to cease the filling of the product named Bullfighter. In the appeal proceedings Winters argued that all of Red Bull's claims should be rejected, since it had not used the alleged infringing signs. The Court of Appeal of 's-Hertogenbosch held that, although the filling of a can does not amount to affixing the sign to the cans (since these were delivered to Winters preprinted), it does qualify as trade mark use as in fact it results in affixation of the sign(s) to the goods themselves, namely the drinks. In the opinion of the Court of Appeal, such use of the signs Bullfighter and Pitbull infringed the trademark rights of Red Bull, due to likelihood of confusion between the these signs and the reputed trademarks of Red Bull.

The facts of the case

The questions have arisen in a dispute between Red Bull and Winter, a company specialising in filling tins with liquids. Winters was instructed by Smart Drinks, a rivalling energy drinks manufacturer of Red Bull, to fill cans with soft drinks. Smart Drinks provided Winters with the cans, preprinted with signs such as Bullfighter and Pittbull, and the extract of the energy drink. Winters filled up the cans with the extract, water and carbon dioxide in accordance with the instructions of Smart Drinks and then delivered the filled cans to Smart Drinks, who would thereupon export the cans to countries outside the Benelux. Winters had thus only rendered "filling up" services for and in order of Smart Drinks and had not offered or sold any of the goods to Smart Drinks or to any other party. Red Bull demanded (in interlocutory proceedings) that Winters be prohibited from such operations, since these were in its opinion infringing the trade mark rights of Red Bull.

The Supreme Court

Winters appealed to the Supreme Court. The Supreme Court decided, given the justifiable doubts about whether the filling up actions by Winters constitute trade mark use, to ask the European Court of Justice the following questions of interpretation:

  1. a) Does the mere 'filling up' of cans, bearing a sign, qualify as use of that sign in commerce, even if such actions are effectuated for and by order of another party as a designation of the goods?
  2. b) Does it make any difference for the answer to the question under (a), whether the use constitutes trade mark infringement?
  3. Should the answer to question 1.(a) be affirmative, can the use of the sign be prohibited in the Benelux, if the products which bear that sign are intended for export to countries outside (i) the Benelux or (ii) the European Union and such products cannot be perceived by the public within Benelux and/or the European Union (other than within the company in which the filling up operation has taken place).
  4. Should the answer to question 1 (a or b) be affirmative, which standard should then be applied when assessing whether infringement exists: the perception of the (averagely informed, prudent and cautious) consumer in the Benelux or the European Union respectively, or should another standard be adopted in this respect, for example the perception of the consumer of the country to which the products are exported?

The judgment of the European Court of Justice could have far-reaching consequences for companies who export products from their territories where the products are not being put on the market. By specifying that the affixing of a mark constitutes trade mark use, the Directive seems to acknowledge that so called export marks are protectable in the country of origin. It is hoped that the Court of Justice will confirm this. Then of course the interesting question is what public should be looked at when resolving the question of confusion: the public at home where the trade mark is registered or the public of the country of destination. The majority opinion in court decisions in the Benelux is that one should look at the public at home, albeit that this is a rather abstract exercise since that public will never see the allegedly infringing products.