By Max Mosing and Constantin Kletzer
Red Bull has been the world’s largest producer of “energy drinks” for decades. It is established case law all over the world that Red Bull’s trade marks, especially in connection with the registered marks UM 017363094, UM 017363037, UM 01056431 and UM 012484441, UM 01564301 and BULL (inter alia UM/IR 0867085) (the Red Bull signs) have a reputation for “energy drinks”.
Bullsone, based in South Korea, has been selling car care products in South Korea since at least 2001 and has a market share of over 90% there.
On 5 May 5 2011 Bullsone changed its brand appearance from the signs used until then (pictured right) to the signs pictured below (Bullsone signs).
Red Bull and Bullsone have litigated regarding the signs all over the world for years. When Bullsone started to offer its products in Austria, Red Bull filed an action with the Commercial Court in Vienna, Austria, on 19 December 2017.
Austrian proceedings for EU-wide order
Red Bull requested, inter alia, that Bullsone be ordered with effect throughout the European Union to refrain from using in the course of business without Red Bull‘s consent the Bullsone signs and/ or similar signs for products in the field of automotive accessories and/or car care products if, without due cause, this would take unfair advantage of, or be detrimental to, the distinctive character or the repute of Red Bull‘s well-known trade marks for energy drinks and for entertainment services in connection with cultural and sporting activities (“events”). Furthermore, Red Bull requested the authorization for the publication of the decision in one of the largest newspapers in Austria.
Bullsone denied the claim by arguing that there would be neither a risk of confusion, nor a risk of an unfair exploitation or dilution of the energy drink’s well-known trade marks: Nobody would make associations between the Bullsone signs and the Red Bull signs especially due to the entirely different kind of products. Furthermore, Red Bull had been aware of Bullsone’s signs for more than 20 years, so the limitation in consequence of acquiescence would apply. In any case, Red Bull‘s trade mark rights would not cover car care products and their reputation for energy drinks cannot be transferred to car care products.
Scope of protection for well-known marks
To be protected under Article 9(2)(c) UMV as a well-known trade mark across industries, the trade mark must enjoy reputation by (at least) a significant part of the significant public for the goods or services (ECJ C-375/97, General Motors). It is not necessary that the well-known trade mark is used on the market on which the infringing sign is used. However, although the protection of a well-known trade mark does also not require likelihood of confusion, there has to a similarity that the relevant public can make associations between the signs (ECJ C-408/01, Adidas; C-487/07, L’Oréal). This similarity refers to the similarity of the goods and services on the one hand and of the signs on the other hand. Consequently, Red Bull had based its claims also on the reputation of its trade marks for entertainment services in connection with cultural and sporting activities (events).
The reference point for the examination of reputation is that the earlier trad emark is known by a significant part of the relevant public (ECJ C-375/97, General Motors). In this, fixed percentages are not decisive. Rather, all the relevant circumstances of the individual case must be considered, in particular the market share, the intensity, the geographical extent and the duration of use and the scale of the investment.
The Austrian courts found that the Red Bull signs “undoubtedly fulfil” those requirements also for events based on the undisputed submissions. All those events in several countries of the EU and worldwide were developed by Red Bull and are hosted by Red Bull or by wholly owned subsidiaries in the respective country. The relevant public for such events is aware that Red Bull does not appear at those events (exclusively) to promote their energy drink, but the relevant public recognizes that Red Bull has created those sports or series of events as their organizer.
Furthermore, the courts ruled that the Bullsone signs are similar to the Red Bull signs in particular because of the same colouring (red colour) and figurative representation (jumping bull in front of a shield with a sun). The Bullsone word-sign is also similar to the protected Red Bull word and figurative marks, because – in addition to the same colouring (red colour) – it contains the word “Bull”, which makes a strong reference to the protected trade mark (the bull) in terms of visual, phonetic and conceptual similarity. The fact that it is only a single word cannot dispel that similarity, particularly since the word “bull” has an identifying meaning in both signs.
After all, the protection of a well-known trade mark requires the use of that sign without due cause taking unfair advantage of, or being detrimental to, the distinctive character or the repute of the trade mark. The mere existence of an association is not sufficient, but if an identical or similar sign is used, it is reasonable to suspect unfair motives because of the obvious possibility of exploiting the reputation of the well-known trade mark. This is particularly the case where a third-party attempts “free-riding” (C-487/07, L’Oréal).
The Austrian courts affirmed such “free-riding“ in the present case: There was no explanation as to what honest motives would have led to adopting Red Bull’s well-known signs; it may be that Bullsone had the Bullsone signs designed in 2011, but this was shortly after Red Bull had entered the Korean market.
Consequently, on 28 July 2020, the Higher Court of Vienna (“Oberlandesgericht Wien” – 1 R 140/19v – Link to Unofficial Translation into English: here; Link to the Decision in German: here) confirmed the decision granting Red Bull’s claims entirely, based – for the first time – on the fact that the Red Bull signs are well-known (also) for services regarding sporting and cultural events.
The authors are members of GEISTWERT Attorneys-at-Law in Vienna. Constantin is also a member of the MARQUES Dispute Resolution Team