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Choice Of Trade Mark: Red Rag To A Bull – Trademark



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Popular trade marks – perhaps unexpectedly to competitors
– can enjoy a very extensive penumbra of protection.

This happened recently in a dispute between two well known
energy drinks manufacturers: Monster Energy Company v. Red Bull
GmbH.

Monster Energy applied for registration and exclusive use in the
UK of the trade mark RED DAWG for (amongst other goods) energy
drinks, which was opposed by Red Bull on the basis of its earlier
UK trade mark registrations for RED BULL covering identical
goods.

The opposition failed on the normal ground of preventing the
registration of a similar later mark for identical goods where a
likelihood of confusion amongst the public exists.

The Hearing Officer acting for the UK Trade Marks Registrar
decided that consumers would neither confuse one mark for the other
nor mistakenly believe that RED DAWG was another product in Red
Bull’s portfolio of energy drinks.

Nevertheless, UK trade marks law affords enhanced protection to
marks with a reputation (in the sense of recognition with the
public) where the later mark would take “unfair
advantage” of the reputation of an earlier trade mark.

The Hearing Officer and on appeal, Adam Johnson J in the High
Court, held that a consumer when confronted with an energy drink
branded RED DAWG would think of RED BULL thus engendering a link in
his or her mind between the two trade marks, which would allow
Monster Energy to benefit unfairly from, or free-ride on, the
marketing costs expended by Red Bull in promoting its RED BULL
trade mark.

Despite the lack of any evidence of subjective intention on the
part of Monster Energy unfairly to benefit, or of consumer reaction
to an energy drink branded RED DAWG, Adam Johnson J upheld the
Hearing Officer’s finding that the taking of “unfair
advantage” could objectively be inferred, in effect from the
extensive reputation of RED BULL in the energy drinks market.

Wrongful intent by Monster Energy was not a legal requirement
for enhanced protection. Just a general intent to maximise product
sales through registration of a chosen brand (likely present in
most trade mark applications) sufficed, if there was objective
unfairness resulting from the similarity in the marks giving
Monster Energy a (presumed) commercial advantage through
influencing the economic behaviour of consumers (again
presumed).

The outcome might be viewed by sceptics as giving to Red Bull a
monopoly over the word “red” in the energy drinks
market.

Of wider import, the case serves as a reminder that the prudent
course is always to get in qualified advice on the potential for
oppositions and infringement claims before going live commercially
with a new name or brand for a product and/or service.

This piece was written and researched by Tristan Morse, with
input from Robert Humphreys. If you have any queries with respect
to any of the matters raised above, then please do contact a member
of our IP team.

All the thoughts and commentary that HLaw publishes on this
website, including those set out above, are subject to
the terms and conditions of use of this website
. None of the
above constitutes legal advice. Much of the above will no doubt
fall out of date and conflict with future law and practice one day.
None of the above should be relied upon. Always seek your own
independent professional advice.

The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.

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