The EUIPO declare Banksy’s ‘Flower Thrower’ trade mark invalid
The EUTM was cancelled on the basis of it being filed in bad faith.
Well-known brand owners such as Red Bull are all too familiar with third parties attempting to imitate aspects of their brands and creating ‘look alike’ products in order to gain a foothold in the marketplace. This activity is referred to as ‘free riding’.
Oscar Wilde famously stated that: “imitation is the sincerest form of flattery that mediocrity can pay to greatness”. Nonetheless, this ‘free riding’ and ‘lookalike’ products can lead to significant damage of the brand-owners reputation and customer confusion, therefore brand owners must be pro-active in monitoring and preventing this behaviour.
On 23 August 2016, an EU Trade Mark Application in class 32 (covering among other things “energy drinks” etc) was filed by Voltino. The application covered the logo shown below:
The logo shows two rams butting heads, a golden sun device with the words “Big Horn” at the bottom. Red Bull considered the logo to be similar to their Red Bull trade marks including their famous double bull device. Red Bull opposed Voltino’s application and the logo was eventually refused in its entirety in an appeal from the initial opposition decision on the 7 January 2019.
Nevertheless during the course of the opposition Big Horn products bearing the logo began appearing throughout the United Kingdom and Bulgaria. The Big Horn energy drinks are sold in cans of an identical shape and size to the classic Red Bull cans.
In response to Voltino’s use, Red Bull raised an infringement action against Voltino and its director (collectively referred to as Big Horn) in the High Court of England and Wales.
In the proceedings before the High Court it was not disputed that Big Horn had used its signs on “energy drinks” in the United Kingdom. In addition, it was not disputed that Red Bull’s trade mark registrations had been used substantially in the United Kingdom and that they were well known.
This left the Court to conclude:
In order to assess similarity, the court compared Red Bull’s registrations with images of Big Horn’s products obtained through test purchases made by Red Bull in June, July and November 2017.
Kelyn Bacon QC (sitting as a Deputy Judge in the High Court) stated, while the marks were not sufficiently similar to justify a finding of a likelihood of confusion, there was sufficient evidence to conclude that Big Horn’s signs were designed to ‘free ride’ on Red Bull’s reputation.
Bacon QC made a global assessment of all the circumstances in the case concluding that the relevant consumer is liable to perceive Big Horn’s products as a budget or cheaper version of Red Bull’s products. The consumer is aided in concluding this by Big Horn’s use of a sign which, while not similar enough to create confusion, does evoke strong visual and conceptual similarities with Red Bull’s established brand.
It is notable that Big Horn’s products strongly evoke the imagery and colour schemes of several of Red Bull’s registrations. Therefore, while individually it may be concluded that Big Horn’s signs are not liable to create confusion, it is clear that the collective use of elements from all of Red Bull’s registrations will create a link between Red Bull’s and Big Horn’s products. In doing so, Big Horn is able to ‘free ride’ on the association with Red Bull’s marks and stimulate sales in such a way which would not be possible but for the reputation developed and invested in by Red Bull. This finding was also supported by the fact that Red Bull had filed supporting evidence showing that Big Horn had posted numerous pictures of their products on Facebook placed directly next to Red Bull products in various retail outlets.
This is a good decision for brand owners who are attempting to prevent the launch of lookalike and competing products. However, Red Bull’s success is dependent on its comprehensive registered protection of numerous elements of its brand, namely its logo and colour scheme. It is therefore paramount that brand owners ensure that they have robust protection for all elements of their products.
For advice about lookalike products and protecting your brands, please get in touch to speak to one of our trade mark attorneys.