Rolex's triumph over Mr Blomqvist in the saga of the privately-imported counterfeit watch was not the only ruling of the Court of Justice of the European Union (CJEU) on an important trade mark case today.  The same court also gave its keenly-awaited decision in Case C-65/12 Leidseplein Beheer, in which the owners of the well-known RED BULL portfolio of trade marks for energy drinks sought to prevent the defendants making and selling energy drinks under the BULLDOG brand.  While Red Bull's Benelux trade mark was registered shortly before that of the defendant, the latter was used as an unregistered mark for various goods and services (but not energy drinks) for several years before Red Bull's registration.  Did the defendant have a "due cause" to use its own mark for energy drinks too?

The CJEU's ruling, which now goes back to the Dutch Hoge Raad for further consideration on the facts before it, reads like this:

Article 5(2) of ... Council Directive 89/104 ... must be interpreted as meaning that the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of ‘due cause’ within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that sign was being used before that mark was filed and that the use of that sign in relation to the identical product is in good faith. In order to determine whether that is so, the national court must take account, in particular, of:

– how that sign has been accepted by, and what its reputation is with, the relevant public;

– the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and

– the economic and commercial significance of the use for that product of the sign which is similar to that mark.

This means that Red Bull may have to live with BULLDOG products if the considerations mentioned by the CJEU are met.

Dutch MARQUES member Tobias Cohen Jehoram (De Brauw Blackstone Westbroek) tells us that this ruling has a special significance: it represents the final blow to the eternally-cited ruling of the Benelux Court of Justice in Claryn/Klarein, which gave a particularly narrow construction to the notion of the valid reason for using a mark that was not unlike someone else's.