Red Bull v Bulldog: the answer is "yes, but it all depends ..."

Taking advantage of the distinctive character or reputation of another's trade mark is only a problem under European trade mark law if the person who gains that advantage does not have 'due cause' to do so.  But what do the words 'due cause' mean? When asked, the Court of Justice of the European Union (CJEU) can supply the theory, leaving it for the trial court, having done the asking and then received its answer, to apply it to the facts in practice.  In Case C-65/12 Leidseplein Beheer, in a decision published this morning following a reference from the Dutch Hoge Raad (Supreme Court), the CJEU gave its ruling, so now we know a bit more about the theory.

Infuriatingly, while the Opinion of Advocate General Kokott was published online as long ago 21 March 1013 2013, it has so far been rendered into an impressive tally of 21 official languages of the European Union, including Maltese -- but not English. The IPKat was indebted to Stephen Vousden for helpfully providing a note on the Advocate General's Opinion, which you can read here.  Today, mercifully, the CJEU's ruling today appears in English too.

What led to this reference from the Hoge Raad?

Waiting for the horns to grow

In brief, Red Bull makes the 'Red Bull' energy drink. It also owns the Benelux word and image mark 'Red Bull Krating-Daeng', filed on 1 July 1983 for Class 32 (alcohol-free drinks). For a number of years, Red Bull had been trying to stop Mr de Vries [Merpel notes that Google Translate renders "de Vries" as "The freezer": is this correct?] and his company 'Leidseplein Beheer' making and selling an energy drink the packaging of which is emblazoned with the sign 'Bull Dog'. Red Bull's attempt to invoke trade mark law to stop de Vries ran into difficulty, ostensibly because de Vries was actually using his own trade mark: on 14 July 1983 he had filed a word and image mark 'The Bulldog' for goods in Class 32 (alcohol-free drinks). While Red Bull got its application in first, de Fries had been using his mark since 1975, well before Red Bull had even filed for registration, for various commercial and sales activities ranging from Dutch 'coffee-shops', to cafés, a hotel, and even a cycle-hire shop. It was only in 1997, however, that he began to use 'The Bulldog' for an energy drink.

It was inevitable that de Vries's use of the Bulldog mark for energy drinks would be a red rag to a Bull, which sued for trade mark infringement.  This litigation ended up in the Hoge Raad which did not know whether, for the purposes of EU trade mark law, de Vries had 'due cause' to use his sign. That court therefore asked the CJEU:

'Is Article 5(2) of Directive 89/104 [which was repealed in 2008 and re-enacted in tidying-up Directive 2008/95] to be interpreted as meaning that there can be due cause within the meaning of that provision also where the sign that is identical or similar to the trade mark with a reputation was already being used in good faith by the third party/parties concerned before that trade mark was filed?'

This morning the CJEU ruled as follows:

Article 5(2) of ... Council Directive 89/104 ...  must be interpreted as meaning that the proprietor of a trade mark with a reputation may be obliged, pursuant to the concept of ‘due cause’ within the meaning of that provision, to tolerate the use by a third party of a sign similar to that mark in relation to a product which is identical to that for which that mark was registered, if it is demonstrated that that 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 whether that is so, the national court must take account, in particular, of:

– how that sign has been accepted by, and what its reputation is with, the relevant public;

– the degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and

– the economic and commercial significance of the use for that product of the sign which is similar to that mark.

In other words, "Yes, but the devil is in the detail so it's up to the trial court in each case to do what it thinks right and proper in relations to the facts of the specific dispute before it".  Advocate General Kokott had previously proposed the following answer (here's an unofficial translation):

'When assessing whether a third party who, without due cause, uses a sign similar to a well-known mark takes unfair advantage from the distinctive character or the reputation of that well-known mark within the meaning of Article 5(2) of Directive 89/104 … the fact that the third party has already been using that sign in good faith for other products or services prior to the mark with a reputation having been filed or having acquired its reputation, should be taken into account and favour the third party.'

The CJEU today has slightly expanded and clarified this principle.

What will happen next? De Fries has established that the fact that he was continuing to use an earlier unregistered mark must be taken into account, but there is still plenty to play for.  The trial court dismissed Red Bull's claims but the Gerechtshof te Amsterdam took the opposite view, finding that

"13 ... the sign ‘The Bulldog’ was similar to the mark ‘Red Bull Krating‑Daeng’ and that Mr de Vries, by riding on the coat-tails of that mark with a reputation, had sought to take advantage of the reputation of that mark with a view to having his share of the energy drinks market held by Red Bull and corresponding to a multimillion euro turnover.

14 The fact, relied on by Mr de Vries, that use of the mark ‘The Bulldog’ was a continuation of the use, commencing prior to 1983, of the sign ‘The Bulldog’ for merchandising and designating hotel, restaurant and café services, including the sale of drinks, was not considered by the Gerechtshof te Amsterdam to constitute due cause for allowing the use of that sign.

15 ... Mr de Vries had not substantiated such a need to use that sign that he could not reasonably be expected to desist from such use".

Says the IPKat, it will presumably be necessary for the Dutch to review their findings, and the manner in which they were reached, in the light of today's guidance -- but that does not mean that they will be obliged to change their minds.

Do red rags really make bulls angry? Here and here
Little white bull here
Black Bull here
How to cook a bull's heart here ...
... and other parts here