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UNITARY PATENT

In 2012 Member States and the European Parliament agreed on the "patent package" - a legislative initiative consisting of two...

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Bulldog tamed by Redbull

More on Red Bull, another recently published General Court decision (Red Bull GmbH v Sun Mark Ltd; T-78/13) confirms the hold that the Austrian company appears to have over the EU trade mark authorities.

In this case, Sun Mark had filed a CTM application for Bulldog covering a range of Class 32 goods including energy drinks but excluding beers.

Red Bull opposed principally on the basis of earlier Austrian and International trade mark registrations for the trade mark Bull (covering identical Class 32 goods) and a likelihood of confusion (Article 8(1)(b) CTMR). The opponent’s International trade mark right designated the EU (CTM).

The Opposition Division upheld the opposition. Sun Mark appealed and, no doubt to general surprise, the Second Board of Appeal upheld the appeal and rejected Red Bull’s opposition. The Board decided that the trade marks Bulldog and Bull were overall not similar principally because of the clear visual and phonetic dissimilarities and their significant conceptual differences.

Red Bull then appealed, this time to the (European) General Court. The Court was unwilling to accept the Appeal Board’s heretical thought that Red Bull should not have a monopoly in all “Bull” marks for Class 32 goods. In upholding the opponent’s appeal, and thereby rejecting Sun Mark’s CTM application, the Court first compared the two marks visually and phonetically. In relation to the visual comparison, the Court took a mathematical approach. They commented

“…in the case of relatively short word signs, it must be held that the fact that the first four letters, constituting all the letters making up the earlier word marks and the majority of those forming the mark applied for (four out of seven), is sufficient for the Board of Appeal’s characterisation of the signs as ‘similar to a rather low degree’ to be dismissed”.

As to the phonetic comparison, the Court decided that

“It follows that the syllable ‘dog’, the pronunciation of which is clear and produces a hard sound, as the Board of Appeal rightly pointed out, constitutes a feature so distinguishing the signs at issue that they cannot be regarded as having a high degree of similarity, but rather an average degree of similarity once more”.

Finally, the Court moved on to perhaps the most important issue, the conceptual comparison of the two marks. Having noted that the relevant public in this case was the general EU public, the vast majority of whom are not English speaking, the Court stated

“The fact that, in the three official languages of the European Union cited by the Board of Appeal in support of its reasoning, the translation of the word ‘bull’ is similar to the English word is not sufficient to permit that reasoning to be extrapolated to the relevant public in its entirety. Indeed, in Spanish and Italian, the word ‘bull’ is rendered as ‘toro’. It is rendered as ‘tavros’ in Greek, ‘touro’ in Portuguese and ‘tjur’ in Swedish. In French it is ‘taureau’; the word which is pronounced like the word ‘bull’ is ‘boule’, one of the meanings of which corresponds, in English, to ‘ball’.

Consequently, the fact that that term cannot have a specific meaning for a large part of the relevant public renders nugatory any comparison with the other word sign ‘bulldog’, notwithstanding the fact that the English word ‘bulldog’, as the Board of Appeal pointed out, correctly this time, has passed into nearly all official EU languages almost unchanged…the non-English-speaking public will have knowledge of only one of those two terms, which rules out the conceptual comparison having any bearing on the majority of the relevant public.

By contrast, the English-speaking part of the relevant public, not only in the UK but also in Ireland and Malta, where English is an official language, and in several other Member States of the European Union as well where people use English daily, will recognise that the signs at issue refer to two separate animals.

However, …contrary to what the Board of Appeal stated, those signs are not devoid of a certain conceptual similarity…both the bull…and the bulldog…convey the image of animals from which a concentrated force emanates, a great muscular force often expressing itself aggressively towards their fellow creatures or human beings, especially when that power is on display in combat or at bullfights.

Overall, therefore, the Board of Appeal erred in finding that the signs at issue would be perceived as being conceptually dissimilar in a substantial part of the European Union, those signs, for the English-speaking public, having a low degree of similarity and not being comparable conceptually for the majority of the relevant public.

This led to the following conclusion with regard to the overall comparison of the two marks.

“…those signs have, contrary to what the Board of Appeal held, an average visual and phonetic similarity, and for the English-speaking part of the relevant public, a low degree of conceptual similarity, since such a conceptual comparison is not possible for the majority of the relevant non-English-speaking public. It must therefore be concluded that those signs resemble one another overall.”

Having reached that conclusion, and bearing in mind the identity of the two sets of ( Class 32) goods, the Court had no difficulty whatsoever in finding a likelihood of confusion, not only in the non-English speaking parts of the EU but also in the English speaking parts. They therefore allowed the appeal and rejected Sun Mark’s CTM application for Bulldog in full.

It is possible, though, in the writer’s view, extremely unlikely that a non-English speaking EU consumer might confuse a Bull energy drink with its Bulldog competitor, although the fact that the meaning of the word “bulldog” is apparently known throughout the EU surely makes even that highly unlikely. I can assure the members of the General Court however that even a drunk British moron in a hurry would not confuse these two marks. That is perhaps why Sun Mark’s Bulldog branded product is freely available at the website www.bulldogenergydrink.co.uk and why the trade mark is registered in the UK for a range of Class 32 goods including energy drinks.

As to obtaining CTM protection for Sun Mark’s Bulldog brand, a sensible approach would be to file a combination of the word Bulldog plus an image of such a dog. This Sun Mark has done with their recent CTM filing for a Bulldog Power logo in Class 32. It remains to be seen if the EU authorities can conceivably find such a mark to be similar to either the trade mark Bull or the trade mark Red Bull in the opposition that the Austrian energy drinks company has inevitably (already) brought.

As a footnote to the above CTM opposition, this is not the first time that Red Bull and Sun Mark have clashed. In 2012, the former successfully sued the latter in relation to Sun Mark’s sale of a Bullet energy drink in the UK. In that dispute however, Red Bull was able to rely on a CTM registration for the trade mark Bullit in Class 32. Given the clear similarities between the trade marks Bullet and Bullit an outcome favourable to the Austrian energy drink producer was perfectly understandable in that case. In the writer’s view, the same cannot be said of the Bulldog/Bull opposition. The assumption made by the European Court (and in many cases, by OHIM) that ordinary EU consumers are unsophisticated, slow witted and easily confused leads to many poor opposition decisions being made where two marks that are, in fact, readily distinguishable are judged to be confusingly similar. The sooner that this practice changes and a more commercially aware view of the EU market and its public is introduced, the better.