Venezuela: Recommended to pay official fees for trademark in good time before the due date

In Venezuela, as a consequence of the Partial Reform of the Stamp Duties Act (Article 6 of Decree No. 1398) in 2015, there has been a significant increase in the official fees for procedures for registered rights.

The Reform has also complicated the handling of payment of fees for registration, renewal and recordals of changes of ownership, changes of address and licences in the area of trademarks.

Experience has shown us that in Venezuela steps must be taken as far in advance of the due date as possible, given that payments of fees must be transferred to the account of the Autonomous Intellectual Property Service (SAPI) and once the transfer has been completed, the transfer receipt must be officially stamped. It is not uncommon to encounter extraordinary bureaucratic obstacles, which lead to delays.

Furthermore, the U.S. Government recently imposed economic sanctions on Venezuela, which also have an impact in the field of trademarks. The Office of Foreign Assets Control (OFAC) is monitoring transactions made in dollars to accounts in Venezuela, which can lead to considerable delays in the completion of payments. These obstacles can have significant consequences for trademark rights. If we consider, for example, the renewal procedure, in relation to which there are no provisions under Venezuelan legislation for a grace period beyond the expiry date, the payment of the official fee (which for one trademark in a single class currently amounts to 3.000 USD) must be duly confirmed by the SAPI prior to the expiry date of the trademark, otherwise it will be declared abandoned.

It is therefore advisable to keep in mind that in Venezuela, with respect to those procedures requiring payment of a fee affected by Article 6 of Decree No. 1398, it is necessary to act well in advance of the deadline.

Author: Cristina Arroyo

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Philippines – New Declaration of Actual use for maintenance of trademark rights

In the Philippines there has been an important legislative change concerning the maintenance of trademark rights. The change involves a new Declaration of Actual Use (“DAU”), as established by the Intellectual Property Office of the Philippines (IPO) in Circular No. 17-010 (2017 Trademark Regulation), in effect since 1 August 2017.

It would seem that this change derives from the need to adapt Philippine trademark legislation in line with the provisions of the Madrid Protocol, although there may also be other reasons such as a desire to restrict exclusive rights from being obtained in defensive marks or perhaps even to introduce a new official fee. However, our task here is not to analyse the reasons for the changes but to explain them as simply as possible.

Up to now, to preserve trademark rights in the Philippines it has been necessary to attest to use by submitting a DAU and evidence of the use. Under the new Trademarks Act, it has been required to attest to use at different points in the lifetime of the mark:

• By the third anniversary of the filing date of the trademark application, 
• Between the fifth and sixth anniversary of the date of registration of the mark, and 
• Between the fifth and sixth anniversary of the date of renewal of the mark

Circular No. 17-010 establishes an additional DAU to those already required under the existing legislation, which must be filed within one year from the date of renewal of the mark.

The requirement to submit the DAU affects Philippine national marks, international marks designating the Philippines and subsequent designations of the Philippines for international marks. If a mark has been protected through the international registration system, while the term is also one year, it is calculated from the date of renewal of the international mark.

Circular No. 17-010 is certainly complex, as it appears to indicate that the requirement to submit the new DAU will be applied with retroactive effect to marks that have been renewed since 1 January 2017, and at the same time it appears to state that this requirement must be met for all marks within one year from its renewal date.

In practice, for each trademark that is to be kept in force in the Philippines, a DAU will have to be submitted within the established term of one year from the renewal date and that same formality will have to be carried out again at each 10-year cycle during the lifetime of the registration.

In the more immediate term, those owners of trademarks which were due for renewal from 1 January 2017 will have to satisfy the requirement of submitting the DAU before the end of the one year term from the date on which the registration was set to expire. Those owners that have renewed their marks in the course of 2017 and wish to keep them in force, will have to keep in mind that they must comply with this requirement within the time limit.

This retroactive effect will not really exist in relation to international marks because the Philippines acceded to the Madrid Protocol on 25 July 2012. Therefore, the first international marks designating the Philippines will not be due for renewal until 2022. In this regard, Article 14.5 of the Madrid Protocol establishes that with respect to international registrations made under the Protocol prior to the accession thereto of the State in question, subsequent designations of protection in that State are not possible, and therefore there would not be any subsequent designations of trademarks in the Philippines that would be affected retroactively by this new requirement. In the case of international marks, it is a change to bear in mind in the longer term.

Author: Cristina Arroyo

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Trademarks in Spain: a step by step by guide

ELZABURU partners Luis Baz and Fernando Ilardia offer a complete and easy to follow guide about trademark registration in Spain: how to apply for your trademark, refusals, oppositions and so on

Spanish chapter

Reproduced with permission from Global Legal Group (published in May 2017)

Mercantile courts make a move

The Official State Gazette for the penultimate day of the year came out with a surprise in the form of the publication of a decision whereby the National Judicial Council has designated specialized courts to hear IP related lawsuits in the following autonomous communities:

  

Community	Designated courts
Catalonia	Barcelona Mercantile Courts Nos. 1, 4 and 5: patents and industrial designs Barcelona Mercantile Courts Nos. 2, 6, 8 and 9: trademarks
Madrid	Madrid Mercantile Courts Nos. 7, 8, 9 and 10
Valencia	Valencia Mercantile Court No. 2: patents Valencia Mercantile Courts Nos. 1 and 3: trademarks and industrial designs

The decision has been prompted by the risk (relative though it may be), perceived upon the promulgation of the new Law 24/2015 on Patents, that lawsuits in the IP field could migrate to Barcelona. It will take effect from April 2017, which is when that new law comes into force.

It remains to be seen whether, since the geographical scope of the specialization remains limited, legal actions are going to be concentrated in    Madrid, Barcelona and Valencia (together with Alicante) to the exclusion of other autonomous communities. However, that is another story. For the moment, the decision of the National Judicial Council may be received with relief and applause.

Author: Antonio Castán

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The lessors of physical premises also infringe trademark rights

If you are going to let premises or a sales point in a market hall to a trader who could be infringing intellectual property rights, bear in mind that you could end up being sued by the rightholders.

The CJEU, in a judgment published yesterday (7 July 2016) in case C-494/15, considers lessors as an “intermediary” against whom an injunction can be issued.

The judgment stems from legal proceedings brought by Tommy Hilfiger, Lacoste and Burberry against Delta Center.  The defendant is the tenant of the marketplace ‘Pražská tržnice’ (Prague market halls), which sublets to market-traders the various sales areas in that marketplace.

The plaintiffs basically asked Prague City Court to order Delta Center to refrain from concluding or extending contracts for the rental of sales areas in the market halls with persons who infringe intellectual property rights.

The judgment concludes as follows: “The third sentence of Article 11 of Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights must be interpreted as meaning that the tenant of market halls who sublets the various sales points situated in those halls to market-traders, some of whom use their pitches in order to sell counterfeit branded products, falls within the concept of ‘an intermediary whose services are being used by a third party to infringe an intellectual property right’ within the meaning of that provision.”

The judgment goes on to specify that the conditions established for action against intermediaries in an online marketplace also apply to action against intermediaries in a physical marketplace, i.e., “injunctions must be equitable and proportionate. They must not therefore be excessively expensive and must not create barriers to legitimate trade. Nor can the intermediary be required to exercise general and permanent oversight over its customers.  By contrast, the intermediary may be forced to take measures which contribute to avoiding new infringements of the same nature by the same market-trader from taking place.”

Although the judgment calls for a fair balance to be struck, the subjective extension of the concept of “intermediary” to actions for intellectual property infringement in the physical marketplace seems clear.

Author: Antonio Castán

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The Spanish Supreme Court applies CJEU doctrine in respect of use of third parties’ trademarks as search engine keywords

Judgment 105/2016, rendered by the Civil Chamber of the Spanish Supreme Court on 29 February, establishes the criteria pursuant to which the use of a third-party trademark as a search engine keyword must be examined in order to determine whether it infringes the trademark holder’s exclusive rights.     

To that end, the Supreme Court has followed in the footsteps of Alicante Court of Appeal and applied the doctrine established by the Court of Justice of the European Union in its judgments of 23 March 2010 (joined cases C-236/08 -Google France v Louis Vuitton-, C-237/08 -Google France v Viaticum- and C-238/08 - Google France v Centre National de Recherche en Relations Humaines), 12 July 2011 (C-324/09, L'Oréal SA v eBay International AG) and 22 September 2011 (C-323/09, Interflora Inc. v Marks & Spencer plc).

According to that doctrine, the use of third parties’ trademarks as keywords in principle infringes the trademark holder’s rights.  Nevertheless, since exclusive trademark rights are not absolute, under certain circumstances such use will not be considered as infringing.  Those circumstances are as follows: 

i) where the use of the trademark is not liable to affect the ‘product origin indicating’, advertising or investment functions of the trademark; and 
ii) where it is clear to the average Internet user that the goods or services advertised do not come from the trademark holder or from an undertaking economically connected to it.              

Unauthorized use of a trademark in advertisements published on the Internet without the consent of the advertiser

The Court of Justice of the European Union has just delivered a judgment (case C-179/15) in response to a request for a preliminary ruling submitted by the Fővárosi Törvényszék (Budapest Municipal Court, Hungary) in relation to the interesting question of the interpretation to be given to Article 5(1)(a) and (b) of the First Council Directive in a case where unauthorized use is made of a mark in an advertisement published on the Internet without the consent of the advertiser or which remains there despite the efforts of the latter to have it removed.

The background

The parties to the main proceedings out of which the question arose are a motor vehicle manufacturer and a Hungarian company engaged in the retailing of motor vehicles and their parts and in the repair and servicing of such vehicles.

In 2007 the two had entered into an after-sales service agreement under which the Hungarian company was entitled to describe itself as an authorized dealer of the motor vehicle brand. The agreement expired in March 2012.

While the agreement was in force, the Hungarian company ordered from an online advertising services provider the publication on the website www.telefonkonyv.hu of an advertisement in which the company was presented as an authorized dealer. The publication was to cover the years 2011 to 2012 only.

Following the expiry of the agreement, the Hungarian company tried to  remove from the Internet any advertisement in which it was presented as an authorized dealer of the brand to which the contract related. To that effect it contacted the provider it had engaged and also wrote to various operators of other websites on which advertisements, describing it as an authorized dealer, had appeared. However, those requests went unheeded.

In view of the ongoing use of its trademark, the motor vehicle manufacturer brought a legal action seeking: (i) a declaration that the Hungarian company had infringed the trademark through those advertisements; (ii) that the Hungarian company be ordered to remove those advertisements, to refrain from any further infringement and to publish a corrigendum in the national and regional press.

In its defence the Hungarian company argued that the only advertisement it had placed on the Internet was the one published on the website www.telefonkonyv.hu and that the others had been published without its consent. In this regard it submitted an expert report showing that the advertisements had been reproduced by certain providers of Internet advertising services without its knowledge or consent and that this is in fact a common commercial practice in which some operators engage. 

In these circumstances the Budapest Municipal Court stayed the proceedings in order to refer the following question to the Court of Justice for a preliminary ruling:

“Must Article 5(1)(b) of [Directive 89/104] be interpreted as meaning that the trade mark proprietor is entitled to prevent a third party named in an advertisement on the internet from making use, for services of that third party identical to the goods or services for which the trade mark is registered, of a sign likely to be confused with the trade mark, in such a way that the public might be given the mistaken impression that there is an official commercial relationship between the undertaking of that third party and the trade mark proprietor, even though the advertisement was not placed on the internet by the person featuring in it or on his behalf, or it is possible to access that advertisement on the internet despite the fact that the person named in it took all reasonable steps to have it removed, but did not succeed in doing so?”

The importance of intangible assets to start-ups: Keys to proper protection

The third industrial revolution is upon us. The first was marked by controlling natural resources and building infrastructure and the second by mass production and distribution. The third is marked by generating value through information. We live in an age of globalization and hyperconnectivity, when speed in developing and implementing valuable ideas means the difference between success and failure.

In line with this, corporate value is undergoing a shift from tangible to intangible assets. Companies like Google, Facebook, and Apple have very little in the way of tangible fixed assets; instead their growth is driven by their intangible assets. Companies will be piling onto this bandwagon more and more, and this includes even traditional companies, which are adapting or will have to adapt their business models to survive.

As intangible assets grow more and more important, protection of these assets has become a vital necessity. Brick and mortar can be protected by locks, alarms, and guards – but how do you protect a valuable idea? Using the framework of the law is key. Today, intellectual property is playing an increasingly important role, and that role will only become greater.

Intellectual property is like a hand with five fingers: trademarks, patents, designs, copyright, and trade secrets. This simile is an apt one here, because the hand is an extremely versatile tool capable of performing the most intricate tasks. Think of playing a musical instrument. The trick is to use the available rights wisely.

Which right is the right one, when and where should it be registered, should it be used in association with complementary rights, how can it be enforced against competitors, and what kind of valuation is appropriate for business transactions – all these questions are key to intelligent use of intellectual property.

Integrating intellectual property into the creative process is another key factor. It is not enough to develop something and then decide on protection-related issues when finished. Projects cannot be managed without managing employee and participant, partner company, supplier, and customer relations from the very outset.

Decisions to redirect or abandon a project cannot be taken without taking into consideration rights obtained, registered, or pending, possible repurposing, and the consequences of abandonment.

This is important to all companies, but it is vital to innovative SMEs and start-ups. It can spell the difference between success and failure. I have seen many young companies with important innovative business ideas fail because they failed to plan out their intellectual property matters as required.

Companies of this kind often complain that intellectual property is an expenditure, is very expensive, serves no real purpose. I can sympathize, even with the last of these objections, because intellectual property is of little benefit when it is not used wisely.

In other words, integrating it into the innovation process and using it intelligently is what makes intellectual property beneficial, necessary, fundamental. Doing this does not require so much money, only thinking about how and when to spend it, how to invest well so that it will help bring about success.

Author: Javier Fernández-Lasquetty
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Impact of counterfeiting in Spain's sporting goods sector third-highest in the EU

Spain ranks third among EU countries in which counterfeiting has the greatest impact on the sporting goods sector, at 15.7 % of sales, more than twice the EU average (6.5 % of sales), behind only Lithuania and Latvia. Nevertheless, in absolute terms the greatest impact is in France and Spain, these two countries accounting for one-third of lost sales due to counterfeiting in the EU, amounting to a total of 492 million euros.

These are the main conclusions with regard to Spain in the recent report entitled "The Economic Cost of IPR Infringement on Sports Goods", issued jointly by the OHIM's European Observatory on Infringements of Intellectual Property Rights and the European Patent Office. According to the report, total consumption of sporting goods in the EU in 2012 was estimated at 7,500 million euros, with 4,271 companies manufacturing products of this kind, employing 43,000 workers in the EU.

In addition to the direct repercussions of counterfeiting in the form of lost sales by lawful companies in the sporting goods sector, other economic sectors are also indirectly affected, suffering losses of 361 million euros. Government revenues are also impacted, with lost taxes (VAT, income taxes, corporate taxes, and social security contributions) estimated at 150 million euros. The direct and indirect impact of counterfeiting in this sector on the EU economy is estimated at around 850 million euros and 5,800 lost jobs.

The report takes into account only manufacturing of sporting goods and equipment as such (e.g., golf clubs, tennis rackets and balls, skis, etc.), excluding sports apparel and footwear, so the economic costs associated with the counterfeiting of sporting goods are in fact higher than those estimated by the report.

Author: Juan José Caselles

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Success with consumers may do in the KORNSPITZ brand for bread rolls

In its judgment of 6 March 2014 in Case C-409/12, the Court of Justice of the European Union ruled on the conditions to be fulfilled for a declaration of revocation of a trademark due to loss of distinctive character.

In the case in question, the Austrian trademark KORNSPITZ had become the commonly used name for a type of bread roll among consumers but not among bakers, who baked the rolls and sold them to the public from a mix supplied by the trademark owner.

The Court followed the ruling already made in its judgment of 29 April 2004 in Case C-371/02 (Björnekulla Fruktindustrier) in a similar matter, though involving pickled gherkins instead of bread rolls. In the opinion of the Court, the consumers' or end users' perception of the goods is a decisive factor in assessing whether a trademark has become commonplace. It therefore concluded that a trademark may be cancelled on grounds of lost distinctiveness where it has become the common name for a product among consumers but not among sellers of that product.

The Court then considered the conditions in which a trademark owner's conduct may be deemed to be "inactivity" within the meaning of Article 12.2.b) of Trademark Directive 2008/95, more specifically, whether the trademark owner's failure to take action to encourage sellers of the product to inform customers that the name is a registered trademark can be regarded as "inactivity".

The Court answered that question in the affirmative, which quite clearly places a heavy burden on trademark owners.

Lastly, the Austrian court that referred the issue for a preliminary ruling also asked whether revocation of a trademark on grounds that it has become the common name for a product necessarily presupposes that it must be ascertained whether there are other names for that same product besides the registered trademark.

The Court ruled the existence of other names to be irrelevant in that in no case would that alter the fact that the trademark had become the commonly used name for the product, the condition for revocation laid down in the Directive.

Author: Carlos Morán

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Can an EU resident purchase a counterfeit product from a Chinese online sales website, even if it is for private use?

By Frank Williams
Vía Wikipedia

The user will certainly be able to buy it. But may never end up receiving it: on entry of the counterfeit product into the EU territory the Regulation relating to the seizure by customs authorities of goods suspected of infringing intellectual property rights will be applied and, as a result, the counterfeit product will be seized and, as the case may be, destroyed.

This is the judgment handed down by the Court of Justice (Second Chamber) in case C-98/13, which was just published on 6 February 2014.

The facts of the case date back to January 2010 when a Danish citizen (Mr. Blomqvist) bought a Rolex watch from a Chinese online sales website and paid for it through the same website. The parcel was sent from Hong Kong to the address of Mr. Blomquvist in Denmark, but was seized by the Danish customs authorities pursuant to EC Regulation no. 1383/2003, which was in force at the time, on grounds of infringement of the industrial and intellectual property rights of the rightholder, Rolex. The Danish importer opposed the destruction of the watch on the grounds that he had bought it lawfully for his own personal use.

The Court of Justice ruled that, although the sale of the goods occurred through a website located in a country outside of the EU, the holder of the industrial and intellectual property rights cannot be denied the protection afforded to that holder by the customs regulation and that, as a result, the counterfeit goods must be prevented from entering the EU territory. It is not necessary to check whether the goods have previously been the subject of an offer for sale or advertising targeting European consumers, because the sale has been accredited.

Consequently, this judgment represents a serious warning to those purchasing goods online: counterfeit goods purchased from websites outside of the EU can be seized and destroyed when they enter EU territory, irrespective of the use made of them.

Authors: Transi Ruiz, Juan José Caselles

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Modernization of the trademark system in the European Union

In March 2013 the European Commission adopted a number of proposals to recast the Directive to approximate the laws of the EU Member States relating to trademarks (now codified as Directive2008/95/EC), and to revise the Regulation on the Community trademark (now codified as Council Regulation (EC) No. 207/2009) and the Regulation relating to fees (codified as Commission Regulation (EC) No.2869/95).

The aim of the proposals is not to create a new system; instead they intend to modernize the existing provisions to make the trademark registration system in Europe more accessible, coherent and efficient.

The new proposals include:

New terminology:

The OHIM will change its name to the ‘European Union Trade Marks and Designs Agency’ (or ‘EUTMDA’) and the terms Community trademark and Community Trademark Court will be changed to "European trademark" and "European Trademark Court".

Fees:

The number of classes covered by a trademark application fee will be reduced from three classes to one, and the application fee will be lowered to reflect this change.

Definition of European trademark:

The requirement that a sign be capable of being represented graphically will be eliminated.

Absolute grounds:

Trademarks applied for in a foreign language will not be granted protection if refused on absolute grounds once the mark is translated into an official language of an EU Member State.

Designation and classification of goods and services:

The new legal texts will codify the EU Court of Justice’s ruling in the "IP Translator" case (literal interpretation). The applicants must specify the goods and services to be covered as opposed to using the general class heading. The owners of CTMs applied for prior to 22 June 2012 will be given a term (probably around six months) in which to evaluate and reformulate the list of goods and services.

Rights conferred by a European trademark:

- CTM infringement actions shall be brought without prejudice to any existing prior rights (article 16 (1) of the TRIPS agreement).

- In cases of double identity and similarity (in relation to the signs and goods and services in question) the only criteria applied shall be the origin function (the functions of advertising, communication and investment shall no longer enjoy protection).

- The use of a protected mark as a trade name shall be considered an infringement.

-  The "own name" defense shall only be applied to personal names. 

 - Rights holders will be able to prevent the use of their marks on illegal comparative advertising.

Protection of geographical indications and traditional terms:

Grounds for refusal shall be adapted to European laws with respect to geographical indications and traditional terms in the wine sector and other specialist sectors. 

Geographical indications and designations of origin protected under EU laws shall be considered applicable as relative grounds for refusal of registration and may thus be cited as possible bases for opposition.

European certification marks:

European certification marks, which currently exist at a national level only in some Member States, are introduced throughout the EU.

Changes in procedures:

- Member States shall establish an administrative procedure for the invalidation and revocation of trademarks (rather than court procedures).

- Ex officio examinations by national offices shall be limited to absolute grounds for refusal. 

- The option of applying for European trademarks via National Offices shall be eliminated.

Anti-counterfeiting measures:

-  Rights holders will be able to oppose the transit of counterfeit goods throughout the EU customs territory, irrespective of whether or not the goods had been released for free circulation. 

- Rights holders may also prevent the import of counterfeit goods to the EU even if the sender is acting for commercial ends (with a view to combating the sale of counterfeit goods online).

- Rights holders may prevent the distribution and sale of labels and packaging that may subsequently be used in connection with counterfeit goods.

Trademarks as objects of property:

Incorporation of new rules relating to the use of trademarks for commercial purposes.

It is expected that the above proposals will be formally adopted in spring 2014. Once these proposals are adopted, the EU Member States will need to incorporate the provisions of the new trademark directive into their respective national laws within a term of two years. Most of the amendments to the new Regulation on the European Trademark, meanwhile, will come into effect after its entry into force in 2014.

Author: Enrique Armijo Chávarri

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China passes new Trademark Law

On 30 August 2013 the Standing Committee of the National People's Congress, China's top legislative body, passed the third revision to the Trademark Law. The new law will take effect on 1 May 2014. Here are some of the main changes:

Faster prosecution: Under the former law there were no time limits for prosecuting applications, oppositions, requests for cancellation, or disputes, and proceedings were very slow. The law has been amended to specify time limits of from 9 to 12 months for each proceeding, extendible for 6 or 12 months.

Sound and other non-traditional trademarks The new law paves the way for registration of sound marks and other non-traditional marks, though the latter are not specifically mentioned in the amended version of the law.

Multi-class filings Up to now, trademark filings in China have required a separate application for each class, even for the same trademark. Under the new law, China joins other countries, like Spain, in allowing a single application to claim multiple classes.

Electronic filing: Applications may be filed electronically now, but only on a limited basis. The new law specifies electronic filing as a valid means of filing applications and also makes provision for the electronic filing of all sorts of documents relating to an application.

Labeling of well-known brands: From entry into force of the new Trademark Law, sellers and manufacturers will not be able to label their products as well known in any sector of trade. In the event of non-compliance, the seller/manufacturer may be fined RMB 100,000 (approximately 12,500 euros).

New grounds for contesting bad-faith applications: Under the provisions of the new law, a trademark shall not be registered for goods that are the same or similar to those on which an earlier mark has been used where the applicant for the trademark has had a contractual, business, or other relationship with the owner of the earlier identical or similar mark and had knowledge of the earlier mark.

The filling of packaging on the instructions of another company does not constitute third-party trademark infringement. Judgment handed down by the CJEU on 15 December 2011, Red Bull (C-119/10).

1.         Background.  The company Smart Drinks, Ltd. (Smart Drinks) instructed Frinsdranken Industrie Winters BV (Winters) to fill cans with fizzy drink.  The empty cans had previously been supplied to Winters by Smart Drinks and bore various distinctive signs, some of which were similar to the well-known energy drink trademark RED BULL.

Red Bull GmbH (Red Bull) filed proceedings with the Dutch courts against Winters for infringement of its RED BULL trademark.  The issue of whether the filling of packaging supplied by a third party bearing a certain sign constitutes use of that sign within the meaning of Article 5.1 of the First Trademark Directive was referred to the Court of Justice of the European Union, which held that that it does not.

2.         Findings.  The Court of Justice of the European Union exempts Winters from liability for any infringement of Red Bull’s trademarks.  It holds that Winters merely executed a technical part of the production process of the final product, without having the slightest interest in the product’s trade dress or in the signs affixed to the packaging.  In that regard, the Court refers to the findings laid down in the judgment of 23 March 2010, Google France and Google (C-236/08 & C-238/08), in which it was affirmed that 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 within the meaning of Directive 89/104.

As an additional factor to support the finding that Winters had not infringed any trademark rights, the judgment adds that the necessary identity or similarity between the goods covered by the RED BULL trademark registrations (which identify a drink) and the services rendered by the company in question, consisting of the filling of packaging, is lacking.

3.         Remarks.  Red Bull and the European Commission had expressed their concerns to the Court of Justice of the European Union that trademark rights could be infringed through the strategy of dividing the production process into several stages, and entrusting those stages to different service providers.  The judgment expressly rejects this argument on the grounds that the protection conferred on the trademark owner is guaranteed by means of the possibility of holding the party contracting those successive services in order to obtain the final product to which the infringing sign is affixed liable for the acts of infringement.  In view of this doctrine, it will therefore be necessary for the trademark owner to design an adequate strategy to be followed so that defensive action can be instituted against the party that is truly liable for the trademark infringement.

Author: Carlos Morán Medina

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