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EU: No Secondary Liability if the registered mark of the trademark owner merely forms a technical and passive part of the Intermediary´s manufacture and retail processes for the true infringer (Red Bull v Frisdranken)

Typical intermediaries, such as Internet Service Providers, Internet Search Engine providers, freight forwarders, etc. usually do no more than Google did in the Google France case, or the drink filling service providers in Red Bull, and similarly cannot be taken to have ‘used’ the plaintiff’s marks. At no point would the registered marks of the trademark owners appear in the commercial communications of the intermediaries, with their actions merely forming a technical and passive part of the manufacture and retail processes of the true infringers. The intermediaries therefore do not ‘use’ the sign within the meaning of the EU trademark infringement provisions and do not satisfy this condition.

ECJ decision in Red Bull v Frisdranken C-119/10, a case in which the defendant had filled cans bearing the plaintiff’s ‘Red Bull’ trademark with beverages of a different origin from the plaintiff. The relevant signs similar rather than identical to the plaintiff’s trademarks, therefore this case fell under Article 5(1)(b) of the EU Trademark Directive, which prohibits use of a similar trade mark in the course of trade, but imposes an additional likelihood of confusion requirement.

The interpretation of ‘use’ can, however, also be applied in the context of Article 5(1)(a) which governs identical marks. On the facts, the Court found that the Defendants merely filling packaging supplied by a third party who had previously branded it with the trade mark was not using the mark in the manner required by the Directive.

The ECJ reiterated its findings from Google France, stating that creating the technical conditions necessary for the sign to be used and being paid for that service does not mean the service provider itself uses the sign. In relation to the Defendants’ activities, the court stated:

“… 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.” (para 30)

These cases demonstrate that, under EU law, something more than a mere passive participation in the use of the signs is required for infringement.