Frisdranken Case: Another Bit on ´Intermediary Non-use´ of the Trade Mark
Hutko
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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).
(102) If a sign identical with, or similar to, the proprietor’s trade mark is to be ‘used’, within the meaning of Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94, by a third party, that implies, at the very least, that that third party uses the sign in its own commercial communication. In so far as that third party provides a service consisting in enabling its customers to display on its website, in the course of their commercial activities such as their offers for sale, signs corresponding to trade marks, it does not itself use those signs within the meaning of that EU legislation (see, to that effect, Google France and Google, paragraphs 56 and 57).
(55) Although it is clear from those factors that the referencing service provider operates ‘in the course of trade’ when it permits advertisers to select, as keywords, signs identical with trade marks, stores those signs and displays its clients’ ads on the basis thereof, it does not follow, however, from those factors that that service provider itself ‘uses’ those signs within the terms of Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94.
(56) In that regard, suffice it to note that the use, by a third party, of a sign identical with, or similar to, the proprietor’s trade mark implies, at the very least, that that third party uses the sign in its own commercial communication. A referencing service provider allows its clients to use signs which are identical with, or similar to, trade marks, without itself using those signs.
(57) That conclusion is not called into question by the fact that that service provider is paid by its clients for the use of those signs. 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 the sign. To the extent to which it has permitted its client to make such a use of the sign, its role must, as necessary, be examined from the angle of rules of law other than Article 5 of Directive 89/104 and Article 9 of Regulation No 40/94, such as those referred to in paragraph 107 of the present judgment.
(60) The expression ‘in relation to goods or services’ identical with those for which the trade mark is registered, which features in Article 5(1)(a) of Directive 89/104 and Article 9(1)(a) of Regulation No 40/94, relates, in principle, to goods or services of third parties who use a sign identical with the mark (see Case C‑48/05 Adam Opel [2007] ECR I‑1017, paragraphs 28 and 29, and Case C‑533/06 O2 Holdings and O2 (UK) [2008] ECR I‑4231, paragraph 34). As appropriate, it can also refer to goods or services of another person on whose behalf the third party is acting (order in UDV North America, paragraphs 43 to 51).
