The dispute over similarity and likelihood of confusion between the more recent EU trade mark registration of the word mark FLÜGEL (in engl: WINGS) and the older word mark VERLEIHT FLÜGEL by Red Bull has a new chapter: Red Bull won before the CFI – with reference to Free riding on its reputation.
The dispute about similarity and likelihood of confusion between the more recent EU trade mark registration of the word mark FLÜGEL and the older, national word marks VERLEIHT FLÜGEL and RED BULL VERLEIHT FLÜÜGEL has been dragging on in stages through the courts for 10 years.
Red Bull GmbH (Austria) referred to the reputation of the Red Bull trade marks and therefore sued for likelihood of confusion due to the trade mark application FLÜGEL (applied for on 24 September 1997 by Asolo LTD (Cyprus) and also for damage to its own reputation (declaration of invalidity on the basis of Article 53(1) in conjunction with Article 8(5) of Regulation No 207/2009). This is because the word sign FLÜGEL was registered as an EU trade mark in Nice classes 32 and 33 (beers, drinks, fruit drinks); in contrast, Red Bull’s two earlier national trade marks are registered for “energy drinks” (Nice class 32).
Already in 2018, this case was heard before the European Court of Justice (CFI) – we reported. In March 2019, this case was then decided again before the Board of Appeal, to which it had been referred back in 2018. Once again, it granted Red Bull’s application for a declaration of invalidity, whereupon applicant Asolo Ltd brought another action before the CFI. This has now been decided (EU:T:2021:225).
Reputation of the trademark VERLEIHT FLÜGEL
When examining the reputation of a mark, the following circumstances in particular must be taken into account, the CFI explained: the market share held by the earlier mark; the intensity, geographical spread and duration of use of the mark; and the amount invested by the undertaking in promoting the mark. However, it is by no means necessary to prove that the mark is known to a certain percentage of the relevant public, the court added. Nor does the reputation have to extend to the entire territory concerned, as long as that reputation exists in a substantial part of that territory.
Evidence of Red Bull awareness and reputation
Red Bull had submitted as evidence two awareness surveys conducted in 1997 and 2010, as well as a sworn statement by Red Bull’s general counsel.
The CFI confirmed that the surveys were an appropriate means of proof, that they were conducted by an independent and reputable company on a representative sample in Austria and that they did not contain any suggestive questions. However, the 2010 survey could not be taken into account, as the Board of Appeal had done.
In principle, the reputation must be proven and established for the time of the application for the contested mark – in this case for September 1997. Documents with a later date can also be taken into account, the CFI explained, especially if they allow conclusions to be drawn about the situation at that time – but not through a survey conducted so many years later. On this point, the CFI found in favour of the plaintiff, but this had no influence on the overall decision.
Red Bull trade mark VERLEIHT FLÜGEL basically a slogan
The applicant also claimed that the earlier mark was a slogan and therefore lacked the distinctive character required for a valid trade mark. But the CFI rejected this. The same criteria must be applied to the assessment of the distinctiveness of a slogan as for all other trade marks, the court explained. Moreover, the validity of a national trade mark could not be called into question in proceedings for a declaration of invalidity of an EU trademark, but only in proceedings for a declaration of invalidity in the Member State concerned. For that reason alone, the earlier Red Bull mark must be recognised as having a certain distinctive character.
Free riding on reputation of Red Bull
The applicant also challenged the finding that it had taken unfair advantage of the reputation of the Red Bull mark – but in vain. The CFI explained that, according to the case-law, the concept of taking unfair advantage of the reputation of the earlier mark – “parasitism” or “free-riding” – concerns the exploitation of the use of not only an identical but also a similar challenged mark. It includes, in particular, cases in which there is a transfer of the image of the mark with a reputation or of the characteristics which it projects onto the goods designated by the contested mark.
That was precisely the case in the present case; no one would assume that one could actually fly if one drank the drinks of the said marks. In vain, the applicant argued that the earlier trademark Red Bull does not refer to the concept of a wing, but consists of a metaphor according to which the drink Red Bull lifts you up into the air. Instead, the CFI stated that the term flying for the goods in question is perceived in a figurative sense and is used as a metaphor that the drinks give someone a feeling of lightness, energy or even joy and positivity.
Proximity between the goods
Therefore, the Board of Appeal was correct to find that there was a degree of similarity between the marks and, accordingly, a likelihood of confusion – in relation to all the goods claimed by the contested mark FLÜGEL. The CFI emphasised that, without disregarding the ratio decidendi of the judgment of 4 October 2018, FLÜGEL (T-150/17, EU:T:2018:641), the Board of Appeal had rightly found that there was a proximity between the goods in question. Therefore, while the finding from the 2018 judgment that an alcoholic beverage and an energy drink cannot be considered similar merely because they can be mixed, consumed or marketed together applies.
But Article 8(5) of Regulation 40/94 expressly refers to the case where the goods are not similar, the court added. And it is common knowledge that energy drinks and alcoholic beverages are sold in the same supermarkets and are often listed next to each other on bar menus – ergo, there is proximity between the goods.
The case was therefore dismissed in its entirety and the damage to the reputation of Red Bull’s earlier mark was upheld.
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