Thursday, 5 March 2020

Dilution and figurative trade marks: Red Bull v Bighorn

Red Bull energy drink has been around for a long time now. I discovered it during my stint teaching IP at Essex University, when I would take a day a week off from my day job and trek across the country. On arriving at Colchester a can of Red Bull would help me get through the two-hour class I was there to teach, and in fact I recall that it was Austrian students in that class, who drove home with the assistance of a few cans but had to take care because it was illegal in Switzerland, who first alerted me to its properties (I deliberately refrain from using the word "benefits").

Article 9(2)(c) of the EU trade mark regulation (2017/2001) (which is in pretty much the same terms as s.10(3) of the Trade Marks Act 1994) protects a trade mark with a reputation against acts that "without due cause" (I put that in inverted commas because it is hard to see how it could be otherwise) take unfair advantage or that reputation or are otherwise detrimental to it (or for brevity dilution and tarnishment). Back in 1994 (or perhaps more accurately 1989, when the original directive was made) that was a radical new departure in trade mark law, not just in the European Community and still less just in the UK, but in the world at large: the US had dabbled with such protection but even in the Dallas Cowboys Cheerleaders case the judge had stuck to the well-trodden path of confusion rather than following the "dilution" signpost.

A major problem is the notion of a trade mark with a reputation - haven't all trade marks got reputations, some larger than others? The French version of the directive looks to be referring to trade marks "of repute", which is a different matter - and Article L713-5 of the French Code refers to "une marque jouissant d'une renommée". But whatever the law means, we can probably assume that the trade mark RED BULL, and the same trade mark owner's figurative trade marks (what normal people would call logos) or at least some of them, have reputations. (Incidentally, it seems to be the trade mark not the product or the trade mark owner that must have the reputation, which is, well, interesting.) So no surprise that when Red Bull found another energy drink manufacturer selling its wares under the BIGHORN trade mark using signs that bore a certain similarity to Red Bull logos - in one of the three instances pleaded, charging rams rather than charging bulls - they sued for trade mark infringement on grounds of likelihood of confusion (the rams obviously meaning that the defendant's trade mark could not be identical) and unfair advantage (without due cause, of course).

The deputy judge, Kelyon Baker QC, found no infringement under Article 9(2)(b) - likelihood of confusion - but did consider that the defendant took unfair advantage of the reputation of the claimant's trade mark: Red Bull GmbH v Big Horn UK Ltd & Ors [2020] EWHC 124 (Ch) (30 January 2020). I have shown one of the claimant's registered trade marks and one of the defendant's signs, but you can see them all in the judgment if you click on the link, should you feel it necessary.

There was not a high enough level of similarity to find a likelihood of confusion under Article 9(2)(b), but that didn't matter much because the Deputy Judge held that there was unfair advantage, so Red Bull succeeded. Sky v Skykick [2018] EWHC 155 (Ch) told us that this required the global assessment so beloved of the Court of Justice, taking into account all the circumstances of the case. These would include the strength of the trade mark's reputation, the defree of its distinctive character, the degree of similarity, and the nature and degree of proximity of the goods or services. How strongly and immediately was the claimant's mark brought to mind by the defendant's sign? That would determine whether the use of the sign was taking unfair advantage of the trade mark's distinctive character or reputation.

The defendant did not try to argue that the Red Bull trade marks were not well-known within the EU, which would surely have been a waste of time had they attempted it. Nor did it try to justify its actions by showing "due cause", whatever that might look like (parody, perhaps?). The defendant's signs were visually and conceptually similar to the claimant's marks. They were being used for the same goods, which were sold in the same shops. They were therefore likely to cayuse the average consumer to link those signs with the claimant's marks, and unfair advantage was therefore being taken.

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