Red Bull / The Bulldog: ‘parasitism’ and ‘free-riding’ of the distinctive character or the repute of the trade mark - ECJ L’Oréal / Bellure in practice

22 April 2010

Manon Rieger-Jansen - Matthijs Marell

  

In a decision of the European Court of Justice (“ECJ”) in L’Oréal / Bellure the Court has extended the scope of protection of well known trade marks.

Energy drink producer Red Bull is now one of the first companies to profit from this broad protection in The Netherlands. This new case law is good news for owners of well known trade marks and will for example play a role in cases where supermarkets design their own brand products to look like the original leading brands. 

In February 2010 the Court of Appeal in Amsterdam rendered a judgment regarding a trade mark conflict between two energy drink producers (Red Bull vs. The Bulldog). Subject of the case was whether the sign of The Bulldog infringes the trade mark of Red Bull. In first instance, Red Bull came away empty-handed since no trade mark infringement was found. However, Red Bull was more successful on appeal.

The Court of Appeal referred to the L’Oréal / Bellure decision (C-487/07- 18 June 2009) of the ECJ regarding infringement of well known trade marks and the clarification of what constitutes taking unfair advantage of the distinctive character or the repute of a well known trade mark.

The ECJ ruled that advantage of a trade mark is unfair when a party rides on the coat-tails of the mark with a reputation in order to benefit from the power of attraction, the reputation and the prestige of that mark and to exploit, without paying any financial compensation, the marketing effort expended by the proprietor of the mark. The ECJ also indicated that taking unfair advantage does not require a likelihood of confusion or a likelihood of detriment to the distinctive character or the reputation of the mark or, more generally, to its proprietor. If the public makes a connection between the sign and the trade mark, that will be sufficient.

In the case between Red Bull and The Bulldog both logos were found sufficiently similar for the public to make such connection. Although there are obvious differences between the Red Bull trade mark and the sign used by The Bulldog, the court decided to grant extensive protection to Red Bull.

The court inter alia indicated that the public would pay more attention to the words in both logos (Red Bull and The Bulldog) and not to the design of the logos. To judge the resemblance between trade mark and sign, the points of similarity are the most important and not the differences between the two. Furthermore, the court ruled that in Red Bull’s trade mark, the “Bull” part was more distinctive than the adjective “Red”. That distinctive part was also found in the sign “The Bulldog”. The court ruled that there was sufficient similarity for the public to make a connection between the trade mark and sign.

When considering the infringement, the court looked at the similarity of the signs in combination with the reputation of the trade mark “Red Bull” for energy drinks. Furthermore, published statements by The Bulldog’s director played a role in determining that The Bulldog, riding on the coat-tails of Red Bull’s well-known trade mark, had taken unfair advantage of Red Bull’s reputation.

This case shows that L’Oréal/Bellure has great impact on the protection of well-known trade marks. With this case law, the evidential burden of proof has been reduced for owners of well-known trade marks. No proof of a risk of confusion, risk of change in economic behaviour of the public or proof of actual damage is required. The only thing the proprietor has to prove is the infringer’s intention of riding on the coat-tails of the trade mark.

Proprietors of well-known trade marks have a better chance to be successful in acting against infringers, which try to take advantage of their reputation and efforts. For example in cases where private label products of supermarkets are designed to look like the original leading brands, this new case law will be very helpful.

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