Red Bull are the owners of the popular energy drink sold here in the UK, Red Bulled filed for trade mark registration of their mark on 1 July 1983, the mark was registered in Class 32 for non-alcoholic drinks.
Red Bull has been attempting for many years to stop the owners of the Bull Dog mark from using their mark on the same goods. The owners of the Bull Dog mark filed a word and image trade mark registration on 14 July 1983 also in Class 32 for non-alcoholic drinks.
Although Red Bull registered their mark before Bull Dog, the owners of the Bull Dog mark had been using the mark well before Red Bull’s registration, in fact the owners of the Bull Dog mark had been using the mark in relation to many commercial activities including but not limited to shops, hotels, cafes etc.
In 1997 the owners of Bull Dog decided to start using their mark on energy drinks. Red Bull then decided to sue for trade mark infringement. The case has dragged on for some time.
The Court of Justice in the European Union has recently clarified the position on Article 5 (2) of the Council Directive.
It must be interpreted as meaning that the owner of a trade mark with a reputation may be obliged, in line with the concept of ‘due cause’, to tolerate the use of similar mark by a third party in relation to an identical product, if it is demonstrated that the 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 if this is the case the following factors are taken into account:
- How the mark is perceived/its reputation with the relevant public.
- The economic and commercial significance of the use of the marks.
- The degree of proximity between the goods and services for which the mark was originally used and the product for which the mark with a reputation was registered.
It has further been stated that the fact that a party has been using a sign in good faith for other goods or services prior to the mark with a reputation being filed or having acquired its reputation (as above) is a factor that should be taken into account to favour the third party.
In conclusion, Red Bull has not yet succeeded in the action for trade mark infringement against Bull Dog!