On 6 February 2014 the Court of Justice (CJ) found in favour of The Bulldog in its battle against Austrian brand Red Bull and provided trade mark owners with guidance on the meaning of 'due cause'.
In the bullring battle, Red Bull and The Bulldog are in dispute about whether or not The Bulldog is entitled to sell energy drinks under the brand "The Bulldog". The Bulldog started to use the sign in the early seventies for bars and is best known for its coffee shops throughout Amsterdam. The Bulldog registered the trade mark in 1983, which was only a few days after Red Bull had filed their trade mark. The Bulldog argued that it does not infringe Red Bull’s trade mark because it has been using The Bulldog sign in good faith since long before Red Bull registered its trade mark.
The Dutch Supreme Court referred questions to the CJ about whether bona fide use of the sign Bulldog prior to the registration of the well-known trade mark Red Bull could be considered a 'due cause' under article 5 (2) of the Trademark Directive.
The CJ has drawn up of the rules of play, and held that the proprietor of a well-known trade mark may be obliged 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 the sign was being used before the mark was filed, and the use of that sign in relation to the identical product is in good faith.
In order to determine whether the use of a sign may constitute 'due cause', the national Court must take into account three factors: (1) how that sign has been accepted by, and what its reputation is with, the relevant public and (2) the intention of the person using that sign. In particular, the Court must take into account the degree of proximity between the goods and services for which the sign (in this case: "The Bulldog") was originally used and the product for which the well-known trade mark ("Red Bull") was registered, and (3) the economic and commercial significance of the use for that product of the sign which is similar to the mark ("The Bulldog" for energy drinks).
Now the rules of play are established, the Dutch Supreme Court has to assess whether this particular case meets the criteria of good faith and due cause, so the battle of the energy drinks is not over yet. However, in general we can conclude that strict interpretation of 'due cause' has left the battlefield. This means that the owner of a well-known trade mark may have to tolerate coexistence from signs used prior to the filing of the trade mark.