Osborne's black bull is an icon in Spain, but it did not prevail today in trade mark infringement proceedings on the merits before the District Court of The Hague (P.G.J. de Heij, Chr. AJ.F.M. Hensen, P.H. Blok) started by Red Bull in June 2007. From the facts of the case as outlined in the Court's today's decision Osborne and Red Bull had closely cooperated together in the near past: Osborne acted as exclusive distributor for Red Bull in Spain from 1995 until 2005. Red Bull terminated the distribution agreement in November 1995. Shortly after the termination Osborne started dealing its own energy drink. In Spain and Portugal the energy drink was put on the market in cans that look as follows:
The District Court of The Hague was not the first stage of the trade mark battle: Red Bull had started opposition proceedings at OHIM against the following CTM application of Osborne (dated February 10, 2000 with number 1500917) for amongst others non-alcoholic beverages:
Although the Opposition Division and the Board of Appeal upheld the opposition because of a risk of confusion with Red Bull's word mark registrations Toro Rosso and Toro Rojo for non-alcoholic beverages, the Board of Appeal held that there was no risk of confusion with regard to Red Bull's - sole - bull trade mark, primarily because the dominant word element 'TORO' is absent in said trade mark:
Besides that the Board of Appeal decided that the bull depicted in Red Bull's trade mark could not recall the image of a 'peaceful bull' in Osborne's trade mark, and that this element should anyhow be regarded as a secondary
part of this trade mark. Red Bull appealed against this decision at the Court of First Instance.
Before the District court Red Bull especially relied on its plain bull trade mark for which it holds an international registration which includes the Benelux, arguing that Osborne infringed amongst others this trade mark. Osborne filed a counterclaim for revocation of Red Bull's word mark registration 'Bull', because lack of use, but the District Court rejected the counter-claim: although it may be true that 'Bull' is not separately used, but only in combination with 'Red', separate use is not a requirement to refute an action for revocation. What is needed if anything is normal use. The trade mark should be used according to its most important function that is to guarantee the identity of origin of goods and services. The use of 'Bull' in combination with 'Red' was found to be normal use, because Osborne did not deny that the trade mark 'Bull' has inherent distinctiveness and accordingly capable to identify
the origin of the goods of Red Bull. Another conclusion would be contrary to the ECJ's
decision in the Have a break case (ECJ
July 7, 2005, C-353/03).
With regard to Red Bull's infringement claim the District Court found that the use of the signs on the cans of Osborne could cause a risk of confusion at the public and accordingly awarded the infringement claim based on Red Bull's - sole - bull trade mark. To reach this conclusion the District Court compared said trade mark with the image of the bull on the Osborne can and the word element TORO
(the Court considers the element XL not distinctive). For the District Court both elements are of equal weight because the image of the bull on the can is depicted in a separate frame with a red basic colour that differs from the basic colour of the can. Accordingly the District Court attaches equal weight to both elements unlike the Board of Appeal that attached more weight to the figurative element.
The District Court considers that there is a relevant visual similarity between the two bulls ('In both cases the figurative element is an image of a bull. Moreover the bull is depicted in a similar way in so far as the bull in both cases is depicted from aside and has been composed in a rather realistic way'). The differences between the two bulls are not enough to outweigh the similarities, especially since the District Court considers that the average consumer of energy drinks should be taken into account who does not observe the different details of trade marks, but perceives a trade mark as a whole.
The fact that Red Bull's - sole - bull trade mark lacks the word element 'TORO
' is not enough to neutralize the similarity between the trade mark and the sign, because of the conceptual similarity. Both refer to the concept bull, and more especially a powerful and energetic bull.
The District Court furthermore considers that both bulls are used for identical goods and that Red Bull's bull trade mark has gained considerable distinctiveness due to the use of that trade mark in other Red Bull trade marks.
On these grounds the District Court held that Osborne infringed the - sole - bull trade mark of Red Bull. The District Court rejected Osborne's argument that the Osborne bull is an umbrella trade mark which is well known. This argument could not change the situation since - in so far as the Osborne bull could be considered as a well known trade mark - the target groups of both trade marks are clearly different. Red Bull's target group consists of consumers younger then forty
, while no young consumers form part of the target group of the products for which Osborne uses the Osborne bull in the Benelux, sherry and other alcoholic beverages. 84% of Osborne's target group for those products are older then fifty.