Anyone who affixes a sign confusingly similar to a registered trademark to the packaging of goods without the consent of the trademark proprietor infringes the trademark rights. This follows directly from the wording of the relevant German and European legal provisions (German Trademark Act, Trademark Directive and Community Trademark Regulation).

Therefore, if a bottler fills drinks into bottles or cans with such a problematic sign, the conditions set out in the aforementioned legal provisions should be met since there will be a permanent connection between goods and the sign. The foregoing is also true in accordance with the wording of the aforementioned legal provisions even if the bottler acts on behalf of a third party, which has provided the bottler with the beverage concentrate, pre-printed cans, but retains full responsibility for marketing and sales of the product.

However, the European Court of Justice has just decided the other way around by restrictively interpreting the wording of those legal provisions (judgment of 15/12/2011 – C-119/10 – Red Bull/Winters). According to the aforementioned Judgement, if a service provider such as a bottler 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”, such service provider “does not itself ‘use’ those signs” within the meaning of trademark law.

In this connection the Court of Justice follows up on the considerations made in the previous judgments (judgement of 23/3/2010 – C-236/08 – C-238/08 – Google France and Google; judgement of 12/7/2011 – C-324/09 – L’Oréal/eBay), which dealt however with the special problem of liability of Internet service providers. The present decision extends the course set in those decisions beyond the fields of Internet.

The Court of Justice also noted that the affected trademark proprietor is not deprived of any protection in such cases because it could hold the customer of the bottler responsible, i.e. such customer therefore remains liable. However, in the given case the customer resided in the British Virgin Islands which presents some procedural challenges for the plaintiff, starting up with the service of the complaint and continuing all the way down to the enforcement. Nevertheless, the situation does not appear hopeless for the proprietor. That is because given the wording of that judgement the liability of the service provider is only excluded on the basis of the trademark law. The Court explicitly pointed out that the responsibility of the bottler “must be examined, if necessary, from the point of view of other rules of law”. This is likely to be understood as a reference to the Enforcement Directive (Directive 2004/48/EC). This directive stipulates that legal measures against “intermediary whose services are being used by a third party to infringe an intellectual property right” may also be taken (Articles 9, 11 of the Directive). According to the preamble to this Directive, respective requirements and procedures shall be governed by the laws of the Member States. Accordingly, there should be ample room for the litigation of such cases under the relevant national legislation, in Germany on the basis of the doctrine of third-party liability or other liability concepts It would, however, promoted legal certainty, if the Court had taken this occasion to discuss this issue in more depth or, at the least, explicitly mentioned Enforcement Directive. This contrasts to other cases in which the Court has considered itself competent to point out other possibly relevant provisions of the Union law that were not discussed yet in the proceedings (cf. e. g. judgement of 20/3/2003 – C-291/00 – Arthur et Félicie; judgement of 9.3.2006 – C-421/04 – MATRATZEN).