Businesses that shoulder the vast marketing effort and expense of turning their trade marks into household names can take effective legal steps to prevent competitors obtaining a free ride on their cherished reputations. Well-known energy drinks manufacturer Red Bull did just that in a guideline case.
A rival business operating in the energy drinks market applied to register the phrase 'RED DAWG' as a trade mark. Following concerted opposition from Red Bull, however, a hearing officer appointed by the Intellectual Property Office refused the application.
In his decision, the hearing officer noted that it was not disputed that Red Bull enjoys a powerful reputation in the UK energy drinks market. He found, however, that there was no likelihood of direct or indirect consumer confusion between the two marks. He also accepted that, in seeking to register the contested mark, the rival had no subjective intention to take commercial advantage of the Red Bull mark.
He nevertheless ruled that purchasers of energy drinks bearing the contested mark would certainly be reminded of Red Bull. The contested mark would appear instantly familiar to them, thereby making it easier for the rival to establish the contested mark in the minds of consumers and sell its product without incurring the marketing costs that would usually be required.
The contested mark would attract more consumers to purchase goods offered under it than would be the case if the Red Bull mark were not called to mind. That, the hearing officer found, would essentially allow the contested mark a free ride on the reputation of Red Bull's mark, thereby gaining an unfair commercial advantage.
Dismissing the rival's challenge to that outcome, the High Court described the hearing officer 's decision as unimpeachable. Through its choice of the contested mark, the rival was seeking to influence the economic behaviour of consumers of its product. Neither the absence of a subjective intention to take advantage of the Red Bull mark nor the lack of likelihood of confusion was decisive in the rival's favour.