Choice of trade mark: red rag to a bull

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.

Humphreys Law