In a recent decision of the High Court, Red Bull has successfully claimed infringement of its trade marks by Big Horn, a third party offering a copycat product which was found to take unfair advantage of Red Bull’s rights.
The Claimant, Red Bull, is the owner of various trade marks which have been used for a number of years predominantly in relation to energy drinks. Red Bull brought infringement proceedings against the Defendants based on use of allegedly similar signs on energy drinks and bottled water which were sold in the UK and the EU from around November 2016.
Red Bull’s marks and the infringing signs are set out below:
The first defendant, Big Horn, started to offer energy drinks for sale in the UK and Bulgaria. Red Bull made several test purchases of these products throughout 2017. The Big Horn energy drinks appeared in cans which were an identical shape and size to those used by Red Bull. The cans also display the other Big Horn signs shown above. Mr Enchev, sole Director of Big Horn, was joined as a defendant in his personal capacity.
It was agreed between the parties that Red Bull had a reputation in its trade marks. It was also agreed that Big Horn had used its signs within the course of trade within the EU, in particular in the UK, without Red Bull’s consent.
The Judge found similarity between all of Big Horn’s signs and the Red Bull marks based on visual and conceptually similarity in all cases.
The test purchase product obtained by Red bull was an energy drink sold in a can of identical shape and size to the classic Red Bull cans. Facebook advertising during 2017 also showed pictures of the Big Horn products placed directly next to Red Bull products in retail outlets. These circumstances ultimately led to a finding that consumers would make a link between the Big Horn products and the Red Bull products.
It was held that Big Horn had taken unfair advantage of the distinctive character and reputation of Red Bull’s trade marks with the Judge stating “It is quite evident that Big Horn’s signs have been designed so as to enable Big Horn to free-ride on the reputation of Red Bull”. In light of a lack of evidence of any due cause put forward by Big Horn, use of the marks was found to be infringing under Article 9(2)(c).
Although not necessary to do so as infringement had been found under Article 9(2)(c), the Judge went on to comment that had it been necessary to decide under Article 9(2)(b) she would have held that use of the marks by Big Horn was not infringing under this section. She held that even consumers paying a low degree of attention would not have been confused but rather would have recognised the differences between the marks and would have perceived Big Horn’s products as cheaper or alternative versions of Red Bull’s products.
Mr Enchev claimed that he was not personally liable as all infringing acts were carried out in his capacity as Director of Big Horn rather than in his personal capacity. The Judge reviewed the leading authority on the matter, Fish & Fish v Sea Shepherd  UKSC 10, which held that a defendant is liable as a joint tortfeasor if he has acted in a way that assisted the commission of the tort by the primary tortfeasor and if he did so pursuant to a common design to do or assist with the acts which constituted the tort. The fact Mr Enchev was a Director of Big Horn was neither found to establish that the Fish & Fish conditions were met, nor to exclude Mr Enchev from personal liability.
Ultimately, the Judge found on the facts that there was no doubt Mr Enchev met the test set out in Fish & Fish. Mr Enchev had accepted he was the sole Director and controlling mind of Big Horn. The company was set up by Mr Enchev as a vehicle for the importation and marketing of Big Horn energy drinks. He was directly responsible for Big Horn’s marketing activities as well as being in control of the domain on which the website was hosted and it’s social media accounts which advertised the Big Horn products. The fact the product was produced by Voltino did not prevent Mr Enchev being personally liable “in circumstances where he not only assisted with but entirely controlled Big Horn’s actions in importing, marketing and advertising the infringing products.”
Anyone involved in consumer goods, particularly in the food and drink sector, will be familiar with the frustrations of copycat or lookalike products and the difficulties of taking action against them. Too often we see cases where a lack of a good body of evidence or a lack of registrations for the right marks leads to the owners of well-known brands failing to successfully object to conduct which is clearly taking advantage. In this context, this decision is a real success for Red Bull. Success in the matter was based on a combination of factors including registrations for non-traditional marks, a strong reputation and clear evidence of the Defendant’s intention to take advantage of that reputation.
The decision emphasises the importance of basing proceedings on the correct grounds. It is surely correct for the Judge to have commented that proceedings under Article 9(2)(b) would have failed. Businesses who intend to produce copycat goods of this kind are adept at making their products similar enough to more well-known brands that consumers will make the association, whilst still being sufficiently far removed that consumers would not be confused into thinking the goods originate from the same entity. Big Horn’s effort to produce a lookalike product is an excellent example of this.
It is in these circumstances that a claim of reputation, or in some cases passing off, becomes the most important tool in our toolkit and trade mark owners should use the relevant provisions to their full advantage. In this case, Red Bull did not have to prove its reputation, which was acknowledged by the Defendants, but there is little doubt that this reputation exists.
A well-executed trade mark strategy will try to put trade mark owners in a position where registrations exist for all of their key assets, even those which are difficult to register (like the blue and silver colour combination for Red Bull), and ensure that these rights are supported by a strong body of evidence which clearly demonstrates reputation or unregistered rights as appropriate. After some recent high profile losses for Red Bull (see here for our commentary on one example), it will be pleased to see it’s trade mark strategy come together to produce a good result on this occasion. Other rights holders should be encouraged by the High Court’s finding which sets a precedent for other similar cases.