Frisdranken Industrie Winters BV v Red Bull GmbH.
Date: 2011-12-15
25. Pursuant to Article 5(1)(b) of Directive 89/104 a trade mark proprietor is entitled to prohibit a third party from using, without the proprietor’s consent, a sign identical with or similar to his trade mark when that use is in the course of trade, is in relation to goods or services which are identical with, or similar to, those for which that trade mark was registered and, due to a likelihood of confusion on the part of the public, affects, or is liable to affect, the essential function of the trade mark, which is to guarantee to consumers the origin of the goods or services (see, inter alia, Case C-533/06 O2 Holdings and O2 (UK)  [2008] ECR I-4231, paragraph 57 and the case-law cited).
28. Although it is clear from those factors that a service provider such as Winters operates in the course of trade when it fills such cans under an order from another person, it does not follow, however, therefrom that the service provider itself ‘uses’ those signs within the meaning of Article 5 of Directive 89/104 (see, by analogy, Google France and Google , paragraph 55).
29. The Court has already held that the fact of creating the technical conditions necessary for the use of a sign and being paid for that service does not mean that the party offering the service itself uses that sign ( Google France and Google , paragraph 57).
30. It must be stated that a service provider who, in circumstances such as those in the main action, 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 Directive 89/104, but only creates the technical conditions necessary for the other person to use them.
31. 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. Indeed, the Court has already stated that that expression generally applies to goods or services of third parties who use the sign (see Case C-48/05 Adam Opel  [2007] ECR I-1017, paragraph 28 and 29; O2 Holdings and O2 (UK) , paragraph 34, and Google France and Google , paragraph 60). 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.
32. It is true that the Court has also held that that expression may, under certain conditions, include goods and services of another person on whose behalf the third party acts. Thus, the Court considered that a situation in which the service provider uses a sign corresponding to the trade mark of another person in order to promote goods which one of its customers is marketing with the assistance of that service is covered by that same expression when that use is carried out in such a way that it establishes a link between that sign and that service (see, to that effect, Google France and Google , paragraph 60; Case C-324/09 L’Oréal and Others [2011] ECR I-0000, paragraphs 91 and 92; and UDV North America , paragraphs 43 to 51).
33. However, as the Advocate General stated at point 28 of her Opinion, 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.
34. Since it follows from the foregoing that the conditions set out in Article 5(1)(b) of Direction 89/104 are not fulfilled in a situation such as that at issue in the main action and, therefore the proprietor cannot, on that basis, prohibit the service provider from filling cans bearing signs similar to its trade marks, the question whether the filling constitutes affixing signs to the goods or to their packaging within the meaning of Article 5(3)(a) is irrelevant.
35. Inasmuch as such a service provider enables its customers to make use of signs similar to trade marks, its role cannot be assessed under Directive 89/104 but must be examined, if necessary, from the point of view of other rules of law (see, by analogy, Google France and Google , paragraph 57, and L’Oréal and Others , paragraph 104).
36. Furthermore, contrary to the concerns of Red Bull and the Commission, the finding that a trade mark proprietor cannot act, solely on the basis of Directive 89/104, 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.