On 26 September 2012, the President of the Commercial Court of Brussels granted an injunction in a cease-and-desist procedure on the merits (vordering tot staking/ action en cessation) brought by Red Bull against NV Konings (“Konings”), a bottler of “BULLET” cans.
In an interlocutory judgment of 29 July 2011, Red Bull had already obtained a preliminary injunction against Konings prohibiting the export of BULLET cans outside the Benelux territory. In the interlocutory judgment, the President of the Commercial Court had held that the export of BULLET cans infringed Red Bull’s registered Benelux trade mark “Bullit”.
After the preliminary injunction, the President stayed the proceedings in order to wait for a judgment of the Court of Justice of the EU (the “ECJ”) in a case between Frisdranken Winters BV and Red Bull GmbH (case C-119/10). On 15 December 2011, the ECJ held 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, this Newsletter, Volume 2011, No. 12, p.7). Article 5 of Directive 89/104 entitles the proprietor of the trade mark to prevent all third parties not having his consent from using in the course of trade any signs that are identical or could be confused with the proprietor’s trade mark. Since the ECJ confirmed that the bottler is not infringing the trade mark of the proprietor merely by the provision of his filling service, no direct infringement could be established against Konings. Still, the President of the Commercial Court referred to the opinion of the Advocate General of 14 April 2011 to consider that a bottler could be regarded as an intermediary whose services are used by a third party to infringe an intellectual property right. In the Benelux, Article 2.22.6 of the Benelux Treaty on Intellectual Property (“BTIP”) gives trade mark holders the right to obtain an injunction against an intermediary (tussenpersoon/intermédiaire) used by a third party to infringe its trade mark.
The President of the Commercial Court therefore held that since he had already established that the BULLET cans infringed Red Bull’s registered Benelux trade mark “Bullit”, and since the filling services were an indispensable condition for the trade mark infringement, the conditions of Article 2.22.6 BTIP were met. As a result, the President granted injunctive relief to Red Bull.
By granting the injunction, the President confirmed the wide interpretation of the term “intermediary” as applied by Belgian legal authors. Importantly, such an injunction may also be issued against intermediaries that do not themselves infringe (or contribute to an infringement of) the trade mark. In this case, the intermediary is not liable for the infringement, but may still be ordered to stop the intermediary services on which the infringing party relies.
