Both Monster Energy and Red Bull have been involved in a trade mark dispute. Monster Energy appealed the decision that refused their application to register the mark ‘Red Dawg’. The UKIPO had concluded that there was no likelihood of direct or indirect confusion. However, the opposition was upheld on the basis that Monster Energy’s mark would ‘ride on the coat tails’ of Red Bull’s mark. Monster Energy’s appeal to the High Court was rejected as the court agreed with the UKIPO that the registration of the mark ‘Red Dawg’ would boost sales for Monster Energy due to the popularity and the reputation of Red Bull.
Background
Monster Energy had applied for the trademark ‘Red Dawg’, covering non-alcoholic beverages (Class 32). At the original hearing Red Bull made a successful opposition of the mark on the basis that the Red Bull mark had a reputation in the energy drink market, under S.5(3) Trade Marks Act 1994. Moreover, a link was made that the registration of the mark ‘Red Dawg’ would lead to Monster Energy having an unfair commercial advantage as they would be benefiting from Red Bull’s marketing efforts.
Appeal
Monster Energy appealed the decision on the basis that even though there may be an established link between the products, there had been no evidence of ‘free riding’ or Monster Energy’s intention to take advantage of the earlier Red Bull mark.
From Red Bulls perspective the case of Jack Wills Ltd v House of Fraser (Stores) Ltd was considered as in the case there was no conclusion of deliberate copying of Jack Wills branding, however the court said that unfairness could even arise without any subjective intention to cause harm. Therefore, in Monster Energy’s appeal the judge agreed that Monster Energy would be ‘free riding’ on Red Bull’s mark which would amount to unfair competition.
Monster Energy further argued that Red Bull were required to show that there was a serious risk of unfair advantage. Monster Energy claimed that due to the stature and reputation of their global brand, there was no need for them to seek an unfair advantage from the similarities of the two marks. However, the judge was not persuaded by this argument as based on the analysis that was undertaken, there was an implicit assumption that Monster Energy chose the mark ‘Red Dawg’ for the purpose of influencing consumer behaviour and due to it being similar to the Red Bull mark, they would see an increase in sales.
Therefore, the appeal was dismissed, and the mark ‘Red Dawg’ could not be registered as a trade mark.
This case demonstrated that even if products are not similar enough to cause consumer confusion, it is possible that there may be a link which allows one party to sell products without incurring an advertising cost.
By Abhiraj Aujla, an LLM Student from Solent University
