TRADEMARK LAW
Service provider filling under order packaging to which the sign is affixe does not itself make use of the sign
• Having regard to the foregoing considerations, the answer to the first question is that Article 5(1)(b) of Directive 89/104 must be interpreted as meaning that a service provider who, under an order from and on the instructions of another person, fills packaging which was supplied to it by the other person who, in advance, affixed to it a sign which is identical with, or similar to, a sign protected as a trade mark does not itself make use of the sign that is liable to be prohibited under that provision.
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 tech-nical conditions necessary for the other person to use them.
Customer liable for services attributable to it
• 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.
IPPT20111215, CJEU, Red Bull v Winters
