Choice of brand: red cloth to a bull

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Popular brands – perhaps unexpected for competitors – can benefit from very broad protection.

This happened recently in a dispute between two well-known energy drink manufacturers: Monster Energy Company versus Red Bull GmbH.

Monster Energy applied for registration and exclusive use in the UK of the trade mark RED DAWG for (among other products) energy drinks, which Red Bull opposed on the basis of its earlier UK trade mark registrations for RED BULL covering identical products.

The opposition failed on the normal ground of preventing the registration of a subsequent similar mark for identical goods where there is a likelihood of confusion in the mind of the public.

The Hearing Officer acting for the UK Trade Marks Registry has decided that consumers will not confuse one mark with the other or mistakenly believe that RED DAWG is another product in Red’s energy drink portfolio Bull.

Nevertheless, UK trade mark law grants enhanced protection to marks with reputation (in the sense of recognition by the public) where the later mark would take “undue advantage” of the reputation of an earlier mark.

Hearing and Appeals Officer Adam Johnson J of the High Court held that a consumer faced with a RED DAWG branded energy drink would think of RED BULL, creating a connection in their mind between the two brands, which allow Monster Energy to unfairly benefit from or circumvent marketing expenses incurred by Red Bull to promote its RED BULL trademark.

Despite the absence of any evidence of subjective intent on Monster Energy’s part to unfairly profit from it, or consumer reaction to a RED DAWG branded energy drink, Adam Johnson J confirmed the Hearing Officer’s conclusion that the taking of an ‘undue advantage’ could objectively be inferred from the high reputation of RED BULL on the energy drink market.

Monster Energy’s unlawful intent was not a legal requirement for enhanced protection. A mere general intention to maximize product sales through the registration of a chosen mark (probably present in most trademark applications) sufficed, if there was an objective injustice resulting from the similarity of the marks giving Monster Energy a business advantage (presumed) by influencing economic consumer behavior (again presumed).

The result could be seen by skeptics as giving Red Bull a monopoly on the word “red” in the energy drink market.

Broader in scope, the case is a reminder that the prudent course is always to seek qualified advice on the potential for objections and infringement claims before commercially launching a new name or brand for a product and/or a service.

This piece was written and researched by Tristan Morse, with input from Robert Humphreys. If you have any questions regarding any of the topics raised above, please contact a member of our IP team.

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