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...