The famous Austrian manufacturer of energy drinks Red Bull recently
successfully enforced Community trade mark 2534774, a trade mark
consisting of blue and silver, where the two colours make up half of the
mark each.
Red Bull sued the owner of the Polish trade mark Run Cool, who
consented to the production of an accordingly labelled energy drink in
Austria. The action was also based on different figurative Red Bull
marks.
The first instance court found that the colour combination of blue
and silver was known to 54% of the total population in Austria and 89%
of consumers of energy drinks. Similar awareness has been proven for
Poland, Spain and the Netherlands. The Red Bull logo was proven to be
even more famous.
The first instance court cited the Heidelberg Bauchemie
decision by the Court of Justice of the EU, according to which concrete
and abstract colour marks that have acquired distinctiveness through use
are eligible for protection provided that the application contains a
systematic arrangement of the respective colours and they are connected
in a predetermined and uniform way. Accordingly, the first instance
court found infringement of the colour mark and figurative mark.
Additionally, the defendant was found liable for taking unfair advantage
of the reputation and advertising expenses of the claimant – passing
off.
The Court of Appeal and the Austrian Supreme Court fully agreed. The
Supreme Court found that validity of the colour mark must not be
examined as the defendant had not filed a counterclaim for cancellation
(the defendant merely argued invalidity of the mark). However, if the
trade mark in suit originally lacked any distinctive character and
distinctiveness was acquired through use, this distinctive character
must be presented throughout the EU.
The Supreme Court also found that the requirements for special
protection of famous trade marks were met. Reputation only needs to be
present in a substantial part of the EU, where in principle the
territory of a member state can be considered a significant part. As
reputation was proven for Austria, the lower courts were right in
finding that the defendant infringed the colour mark by taking unfair
advantage. The different word elements as well as the addition of the
yellow parts on the can do not exclude the link caused by the similarity
of the colours.
The most interesting part of this decision was that the Supreme Court
differentiated between the territorial scope necessary to acquire
distinctive character, the whole EU, and the territorial scope necessary
to acquire reputation, which is only a significant part, so one country
of the EU. Given the fact that it seems that Red Bull "only" proved
acquisition of distinctive character through use in a few countries
during prosecution and that OHIM's register shows that a few requests
for cancellation have been filed in recent months, this victory looks
likely to be only the beginning of Red Bull's fight for its two colour
marks.
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| Rainer Beetz |
SONN & PARTNER Patentanwälte
Riemergasse 14
A-1010 Vienna
Austria
Tel: +43 1 512 84 05
Fax: +43 1 512 98 05
office@sonn.at
www.sonn.at