SALGAMBULL | Decision 2696105 - Red Bull GmbH v. TANIR MURAT

Date Published: Sep 28, 2017

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OPPOSITION No B 2 696 105

Red Bull GmbH, Am Brunnen 1, 5330 Fuschl am See, Austria (opponent), represented by Hogan Lovells, Avenida Maisonnave 22, 03003 Alicante, Spain (professional representative)

a g a i n s t

Tanir Murat, Yeniyurt Mah. Mücahitler Cad. Akçabay Apt. B Blok Kat:9 No: 49, Adana, Turkey (applicant), represented by Esquivel, Martin, Pinto & Sessano European Patent and Trade Mark Attorneys, Calle de Velázquez, 3 - piso 3, 28001 Madrid, Spain (professional representative).

On 30/05/2017, the Opposition Division takes the following

DECISION:

1. Opposition No B 2 696 105 is partially upheld, namely for the following contested goods and services:

Class 32: Beers, preparations for making beer; Mineral water, spring water, table water, soda water; Fruit and vegetable juices, fruit and vegetable concentrates, and extracts and syrups and other preparations for making beverages, non-alcoholic soft drinks; Energy drinks.

Class 35: The bringing together, for the benefit of others, of a variety of goods, namely beers, preparations for making beer, mineral water, spring water, table water, soda water, fruit and vegetable juices, fruit and vegetable concentrates and extracts for making beverages, non-alcoholic soft drinks, energy drinks, Meat, fish, poultry and game, processed meat products, Dried pulses, Soups, bouillon, Processed olives, olive paste, Milk and milk products, butter, Edible oils, Dried, preserved, frozen, cooked, smoked or salted fruits and vegetables, tomato paste, Prepared nuts and dried fruits as snacks, Hazelnut spreads and peanut butter, tahini (sesame seed paste), Eggs and powdered eggs, Potato chips, Coffee, cocoa, coffee or cocoa based beverages, chocolate based beverages, Pasta, stuffed dumplings, noodles, Pastries and bakery products based on flour, desserts based on flour and chocolate, bread, simit [Turkish ring-shaped bagel covered with sesame seeds], pogaça [Turkish bagel], pita, sandwiches, katmer [Turkish pastry], pies, cakes, baklava [Turkish dessert based on dough coated with syrup], kadayif [Turkish dessert based on dough], desserts based on dough coated with syrup, puddings, custard, kazandibi [Turkish pudding], rice pudding, keskül [Turkish pudding],Honey, bee glue for human consumption, propolis for food purposes, Condiments for foodstuff, vanilla (flavouring), spices, sauces (condiments), tomato sauce, Yeast, baking powder, Flour, semolina, starch for food, Sugar, cube sugar, powdered sugar, Tea, ice tea, Confectionery, chocolate, biscuits, crackers, wafers, Chewing gums, Ice-cream, edible ices, Salt, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.

Class 43: Services for providing food and drink.

2. European Union trade mark application No 14 898 415 is rejected for all the above goods and services. It may proceed for the remaining services.

3. Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods and services of European Union trade mark application No 14 898 415. The opposition is based on, inter alia, European Union trade mark registration No 698 720 and Austrian trade mark registration No 277 453. The opponent invoked Article 8(1)(b) and 8(5) EUTMR.

REPUTATION – ARTICLE 8(5) EUTMR

For reasons of procedural economy, the Opposition Division will first examine the opposition in relation to earlier EUTM No 698 720 (earlier mark 1) and Austrian trade mark registration No 277 453 (earlier mark 2) for which the opponent has claimed reputation in the EU and Austria, respectively, for energy drinks in Class 32.

According to Article 8(5) EUTMR, upon opposition by the proprietor of a registered earlier trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where the use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are only applicable when the following conditions are met.

The signs must be either identical or similar.

The opponent’s trade mark must have a reputation. The reputation must also be prior to the filing of the contested trade mark; it must exist in the territory concerned and for the goods and/or services on which the opposition is based.

Risk of injury: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the opposition under Article 8(5) EUTMR (16/12/2010, T-345/08, & T-357/08, Botolist / Botocyl, EU:T:2010:529, § 41). However, the fulfilment of all the abovementioned conditions may not be sufficient. The opposition may still fail if the applicant establishes due cause for the use of the contested trade mark.

In the present case, the applicant did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

The signs

RED BULL

(1)

AT502013000050342

(2)

viewimage?imageId=123851359&key=8f3757ca0a8408037a774652b81acf41

Earlier trade marks

Contested sign

The relevant territory is the European Union (in relation to earlier mark 1) and Austria (in relation to earlier mark 2).

The earlier marks are composed of two verbal elements, namely ‘Red Bull’. Earlier mark 2 is a figurative mark, depicting the aforementioned verbal elements in a slightly stylised typeface in black on a white background.

The contested sign is also a figurative mark and is composed of the verbal element ‘SALGAMBULL’ in a slightly stylised typeface in white on a black rectangular background and surrounded by some broken white lines also forming a rectangle. The sign is composed of a distinctive verbal element and less distinctive figurative elements of a purely decorative nature. Therefore, the verbal element is more distinctive than the figurative elements.

None of the signs has an element that is more dominant (eye-catching) than other elements.

The verbal element ‘BULL’, common to all of the marks, meaning bovine animal, will be understood by the English-speaking part of the public and will also be understood by the Austrian, German and Dutch publics due to its fairly similar counterparts in German (‘Bulle’) and Dutch (‘Bul’). As it is not descriptive, allusive or otherwise weak for the relevant goods and services, it is distinctive. The earlier rights’ verbal element ‘Red’ is non-distinctive for the English-speaking consumers of the EU, but only for the registered goods because it denotes their colour. This element is, however, as distinctive as the word ‘BULL’ for the registered services (for which no reputation was claimed, but which were invoked under Article 8(1)(b) EUTMR) for this part of the public, and for all the goods and services for the non-English-speaking part of the public.

Furthermore, although for the majority of the relevant public the contested sign’s element ‘SALGAM’ does not have any meaning, it cannot be excluded that it will be perceived as meaningful by the Turkish-speaking part of the public, namely with the meaning ‘turnip’. Not only is Turkish one of Cyprus’ official languages, but many citizens in EU countries, such as Germany, France, the Netherlands, Austria and Belgium, are of Turkish origin (compare with 19/09/2016, R 2141/2015-5, GÜVEN, § 11). Turnip can be an ingredient of beverages (and foods) and is therefore non-distinctive for the contested goods for this part of the relevant public only. However, the Opposition Division does not consider that this applies equally to the contested services. Moreover, it is important to note that English is widely spoken in Cyprus as a result of it having been under the administration of the United Kingdom for nearly 100 years. Therefore, this part of the relevant public understands all of the elements of the sign and so perceives the element ‘BULL’ as the most distinctive element of the contested sign (in relation to the contested goods).

In addition, a part of the relevant public will not understand any of the verbal elements of the signs.

Conceptually, the signs will be perceived as described above. Consequently, the earlier signs and the contested mark have the concept of a ‘bull’ in common for the English-, Dutch- and German-speaking consumers. Neither the word ‘Red’ nor the word ‘SALGAM’ will change the meaning of the word ‘BULL’. The relevant public will still perceive in the signs the reference to a bull, even a red bull, or a bull in connection with a turnip, and, therefore, the signs are conceptually similar to an average degree.

For the part of the public that does not understand any of the signs’ verbal elements, the conceptual aspect does not influence the similarity.

Visually, the signs are similar to the extent that they coincide in the sequence of letters ‘BULL’. However, they differ in the word ‛Red’ of the earlier signs, which has no counterpart(s) in the contested mark, and in the word ‘SALGAM’ of the contested mark, which, in turn, has no counterpart(s) in the earlier signs. Moreover, they differ in their graphic depiction, as regards earlier right 2 and the contested sign. Consequently, even for the part of the public and for the goods and services for which the words ‘RED’ and ‘SALGAM’ are non-distinctive, the signs are visually similar to a no more than average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛BULL’ present identically in all signs, and to that extent the signs are aurally similar. The pronunciation differs in the sound of the letters ‛Red’ of the earlier signs, which have no counterpart(s) in the contested mark, and in the sound of the letters ‘SALGAM’ of the contested mark, which, in turn, have no counterpart(s) in the earlier signs. Even though the contested mark is composed of one word (whereas the earlier marks are made up of two words), the coinciding distinctive element ‘BULL’ is identifiable because there is a clear aural break between the elements of the contested mark. Consequently, depending on the distinctiveness of the elements ‘RED’ and ‘SALGAM’, the degree of similarity between the signs varies from below average to average.

As the signs have been found similar in at least one aspect of the comparison, the examination under Article 8(5) EUTMR will continue.

Likelihood of confusion is not necessary for the purposes of Article 8(5) EUTMR. Whereas the protection provided for under Article 8(1)(b) EUTMR is conditional upon a finding of a degree of similarity between the marks at issue such that there is a likelihood of confusion between them on the part of the relevant section of the public, the existence of such a likelihood is not necessary for the protection conferred by Article 8(5) EUTMR. Accordingly, the types of injury referred to in Article 8(5) EUTMR may result from a lesser degree of similarity between the marks in question, provided that it is sufficient for the relevant section of the public to make a connection between those marks, that is to say, to establish a link between them (23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 27, 29, 31; 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 57, 58, 66).

Therefore, it remains necessary to examine the other conditions stipulated in Article 8(5) EUTMR, that is, whether or not the earlier marks have a reputation and if, in view of the link that the public would make between the marks, there is a risk that the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade marks.

Reputation of the earlier trade marks

According to the opponent, the earlier trade marks have a reputation in the European Union (in relation to earlier mark 1)and in Austria (in relation to earlier mark 2).

Reputation implies a knowledge threshold which is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In the present case, the contested trade mark was filed on 09/12/2015. Therefore, the opponent was required to prove that the trade marks on which the opposition is based had acquired a reputation in the European Union and in Austria prior to that date. The evidence must also show that the reputation was acquired for the goods for which the opponent has claimed reputation, namely:

Class 32: Energy drinks.

In order to determine the marks’ level of reputation, all the relevant facts of the case must be taken into consideration, including, in particular, the market share held by the trade marks, the intensity, geographical extent and duration of their use, and the size of the investment made by the undertaking in promoting them.

On 09/09/2016, the opponent submitted evidence to support this claim. As the opponent requested to keep certain commercial data contained in the evidence confidential vis-à-vis third parties, the Opposition Division will describe the evidence only in the most general terms without divulging any such data. The evidence consists, in particular, of the following documents:

Affidavit dated 24/08/2016 by the Intellectual Property Counsel of the opponent’s company Red Bull GmbH explaining, in thorough detail, the history and global launch of the Red Bull brand and trade marks, as well as their use (including unit sales and market share) and promotion in various markets (media expenses, marketing expenses and activities), the knowledge in the market of the Red Bull marks (brand value studies, trial and awareness studies, market studies, social media excerpts, excerpts from websites, well-known decisions), brand extensions (e.g. Red Bull Media House, Red Bull Mobile, Red Bull merchandising, Red Bull records and Red Bull magazine) and events (international sports events, international cultural events and national events). The affidavit mentions that the Red Bull trade marks are protected in more than 200 jurisdictions worldwide. The document contains considerable unit sales figures in the European Union between 2011 and 2015, significant market share in different EU countries in 2015 and significant media and marketing expenses between 2011 and 2015 (worldwide, in the EU, in Austria, in Germany and in Cyprus). It is noted that the opponent’s Red Bull brand is ranked among the most valuable brands in Europe, according to the European Brand Ranking Institute, such as in ‘Eurobrand 2011’, ‘Eurobrand 2013’ and ‘Eurobrand 2014’, as well as in ‘Eurobrand 2013 Austria’, ‘Eurobrand 2014 Austria’, ‘Eurobrand 2015 Austria’ and ‘Eurobrand 2016 Austria’. In addition, Red Bull is one of the ‘World’s Most Valuable Brands’ according to Forbes in November 2013, Brand Finance in 2015, the BrandZ top 100 report by Millward Brown, etc. According to market search results of different institutes, the spontaneous and aided awareness of the Red Bull brand in 2015 in different EU countries (including in Austria) was significant. Furthermore, it is stated that Red Bull owns and/or sponsors prominent international sports events and teams, organises various famous international cultural events (artistic and music events), and sponsors national athletes and local events, such as Formula One, the Paris Dakar Rally, the World Rally Championship, Moto GP, various soccer teams (FC Red Bull Salzburg, the New York Red Bulls, etc.), freestyle motocross, ice hockey, Red Bull Stratos, the America’s Cup, the Red Bull Art of Can, the Red Bull Music Academy, Red Bull SoundClash, etc.

The affidavit is supported by the following exhibits (1 to 12):

Exhibit 1: detailed list with the dates of the first shipments of the Red Bull energy drink to countries all over the world, including EU countries.
Exhibits 2, 4 and 11: DVDs containing a number of Red Bull commercials in Germany and Austria and a printed overview (Exhibit 2), video clips demonstrating Red Bull’s activities in the world of sports and culture (Compilation 2014) (Exhibit 4) and a summary about the Red Bull Stratos event (a space driving project involving the Austrian skydiver Felix Baumgartner; Exhibit 11).
Exhibit 3: promotional materials dated within the period 2011-2013 consisting of printed materials and photographs of marketing and advertising materials for the Red Bull trade marks concerning Germany and Austria.
Exhibit 5: Eurobrand and BrandZ brand value rankings relating to 2015 and 2016, respectively.
Exhibit 6: trial and awareness study overview 2015.
Exhibit 7: printouts from the opponent’s website www.redbull.com and, in particular, the German and Austrian websites www.redbull.com/de and www.redbull.com/at showing various items designated with the Red Bull trade marks, as well as activities, events and news.
Exhibit 8: list of well-known decisions containing brief details of numerous decisions of offices and jurisdictions all over the world where the well-known character and/or reputation of the Red Bull trade marks has been recognised in different countries, including within the European Union, for energy drinks.
Exhibit 9: Red Bull Collection catalogue showing various clothing items.
Exhibit 10: excerpts from the opponent’s website www.redbull.com related to Red Bull’s participation in and/or sponsorship of various international sports and cultural events.
Exhibit 12: detailed information about Red Bull’s national events (in Austria and Germany) and sponsorship activities within the period 1990-2016. The data include the event name, duration, name of person/s, (sports) discipline, location, etc.

On the basis of the above, the Opposition Division concludes that the earlier trade marks have a reputation in Austria and the European Union for all the goods for which the opponent has claimed reputation, namely energy drinks in Class 32.

It is clear from the evidence (such as the affidavit, market surveys, sales figures, information regarding market shares and promotional activities, press materials and various judgments and decisions) that the earlier trade marks have been subject to long-standing and intensive use and are generally known in the relevant market, where they enjoy a consolidated position among the leading brands, as has been attested by diverse independent sources. The sales figures, marketing expenditure and market share shown by the evidence and the various references in the press to its success all unequivocally show that the marks enjoy a high degree of recognition among the relevant public.

The ‘link’ between the signs

As seen above, the earlier marks are reputed and the signs are similar to some extent. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed in the judgments of 23/10/2003, C-408/01, Adidas, EU:C:2003:582, § 29 and 31, and of 27/11/2008, C-252/07, Intel, EU:C:2008:655, § 66. It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C-252/07, Intel, EU:C:2008:655, § 42):

∙ the degree of similarity between the signs;

∙ the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

∙ the strength of the earlier mark’s reputation;

∙ the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

∙ the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The earlier trade marks are inherently distinctive to at least an average degree. Both earlier signs refer to the idea of ‘a red bull’, which is rather unique in the context of beverages and, more specifically, energy drinks. In addition, the earlier marks enjoy a high degree of recognition in the relevant territory as a result of extensive sales, marketing and exposure. It follows that the opponent’s highly reputed trade marks, on top of being inherently distinctive and unique, also have a high degree of acquired distinctiveness for energy drinks.

At this point, it is appropriate to indicate that the opposition is directed against the following goods and services:

Class 35: Advertising, marketing and public relations; organization of exhibitions and trade fairs for commercial or advertising purposes; Office functions; secretarial services; arranging newspaper subscriptions for others; compilation of statistics; rental of office machines; systemization of information into computer databases; telephone answering for unavailable subscribers; Business management, business administration and business consultancy; accounting; commercial consultancy services; personnel recruitment, personnel placement, employment agencies; import-export agencies; temporary personnel placement services; Auctioneering; the bringing together, for the benefit of others, of a variety of goods, namely beers, preparations for making beer, mineral water, spring water, table water, soda water, fruit and vegetable juices, fruit and vegetable concentrates and extracts for making beverages, non-alcoholic soft drinks, energy drinks, Meat, fish, poultry and game, processed meat products, Dried pulses, Soups, bouillon, Processed olives, olive paste, Milk and milk products, butter, Edible oils, Dried, preserved, frozen, cooked, smoked or salted fruits and vegetables, tomato paste, Prepared nuts and dried fruits as snacks, Hazelnut spreads and peanut butter, tahini (sesame seed paste), Eggs and powdered eggs, Potato chips, Coffee, cocoa, coffee or cocoa based beverages, chocolate based beverages, Pasta, stuffed dumplings, noodles, Pastries and bakery products based on flour, desserts based on flour and chocolate, bread, simit [Turkish ring-shaped bagel covered with sesame seeds], pogaça [Turkish bagel], pita, sandwiches, katmer [Turkish pastry], pies, cakes, baklava [Turkish dessert based on dough coated with syrup], kadayif [Turkish dessert based on dough], desserts based on dough coated with syrup, puddings, custard, kazandibi [Turkish pudding], rice pudding, keskül [Turkish pudding],Honey, bee glue for human consumption, propolis for food purposes, Condiments for foodstuff, vanilla (flavouring), spices, sauces (condiments), tomato sauce, Yeast, baking powder, Flour, semolina, starch for food, Sugar, cube sugar, powdered sugar, Tea, ice tea, Confectionery, chocolate, biscuits, crackers, wafers, Chewing gums, Ice-cream, edible ices, Salt, enabling customers to conveniently view and purchase those goods, such services may be provided by retail stores, wholesale outlets, by means of electronic media or through mail order catalogues.

Class 43: Services for providing food and drink; Temporary accommodation; Day-nurseries (crèches); Boarding for animals.

The contested goods in Class 32 are all related to, and some are identical to (with regard to the opponent’s energy drinks), the goods in relation to which the earlier marks are reputed. Some of the contested goods are beverages and are closely connected to ‘energy drinks’, as they have the same nature, can be used for the same purpose (quenching thirst) and can coincide in their producers and distribution channels. As regards the contested services in Classes 35 and 43, they are, inter alia, various services related to the bringing together, for the benefit of others, a variety of beverages or foodstuff and services for providing food and drink. These services are also closely connected to the opponent’s energy drinks in the sense that they are complementary and the services are generally offered in the same places where the goods are offered for sale. Furthermore, they target the same public.

Therefore, in the light of all the relevant factors, in particular the strong reputation, uniqueness and enhanced distinctive character of the earlier marks, the similarly between the marks and the fact that the contested sign reproduces the main idea of the opponent’s brand (that of a ‘bull’), and the similarity between the goods and services, the public would naturally be led into immediately establishing a link between the applicant’s mark and the reputed earlier marks.

Therefore, taking into account and weighing up all the relevant factors of the present case, the Opposition Division concludes that when encountering the contested mark the relevant consumers will be likely to associate it with the earlier signs, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T-301/09, Citigate, EU:T:2012:473, § 96).

However, no direct connection or ‘link’ can be established between the opponent’s goods and the following remaining contested services:

Class 43: Temporary accommodation; Day-nurseries (crèches); Boarding for animals.

In the present case, the signs are similar to some extent. This does not mean that the relevant public is likely to establish a link between them. When consideration is given to the abovementioned remaining contested services, it is clear that the similarities between the signs in dispute relate to an element (‘BULL’) that is not split or visually outstanding in the contested sign and is neither the only nor the most distinctive element of the sign (note: ‘SALGAM’ is equally distinctive for the services in question, for both the public that understands this word and the public that does not understand it). Therefore, in view of the not so strong similarities and the differences established above between the contested trade mark and the earlier trade marks and the dissimilarity between these goods and services, it is unlikely that the earlier trade marks will be brought to the mind of the average consumer and even less so to the mind of the professional consumer (the section of the public that the services in Class 35 basically target) on perceiving the contested sign.

While the relevant section of the public for the goods or services covered by the conflicting marks overlaps to some extent, those goods or services are so different that the later mark is unlikely to bring the earlier marks to the mind of the relevant public.

It is not plausible that the public would be reminded of the earlier marks when purchasing the abovementioned contested services bearing the contested mark because they are of different natures, use completely divergent distribution channels and, as regards the services in Class 35, target different sections of the relevant public.

Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

∙ it takes unfair advantage of the distinctive character or the repute of the earlier mark;

∙ it is detrimental to the repute of the earlier mark;

∙ it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in opposition proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the opponent must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the opponent should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

The opponent claims that use of the contested trade mark would take unfair advantage of the distinctive character or the repute of the earlier trade marks, be detrimental to the repute of the earlier trade marks and lead to dispersion of the identity of the earlier marks (dilution).

Before examining the opponent’s claims, it is appropriate to recall that the opposition is directed against the following goods and services:

Class 43: Services for providing food and drink; Temporary accommodation; Day-nurseries (crèches); Boarding for animals.

As seen above, the earlier trade marks were found to have a reputation for:

Class 32: Energy drinks.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/07/2012, T-60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T-215/03, Vips, EU:T:2007:93, § 40).

The opponent bases its claim on the following.

∙ It is clear from the evidence that refers to impressive market shares, the intensive and geographically extensive use of the earlier trade marks and the opponent’s enormous investment in promoting its marks and products that the opponent’s earlier marks are highly reputed in Austria and throughout the European Union. The extent of the opponent’s commitment to the promotion of its reputation under the various Red Bull marks can also easily be discerned.

∙ By using the application, which contains the verbal element ‘BULL’ and thus evokes the same concept as the earlier marks, in relation to the contested goods, the applicant would clearly be put in a position in which some of the qualities of the opponent’s goods would be attributed to its products. That attribution would be manifestly unfair.

∙ It has already been established that the opponent’s earlier Red Bull marks benefit from enormous reputation and prestige in the market. The opponent’s advertising concept of a bull is an unusual concept in relation to the goods and services at issue. This association has been created by the opponent and extensively used on the opponent’s products and in advertising campaigns.

∙ It is highly likely that consumers would think that the goods and services that the applicant markets under the sign applied for are in some way related to, or endorsed by, the opponent. Consumers could thus believe that the applicant’s products constitute a ‘brand extension’ of the opponent’s well-known products. They would therefore attribute the positive images that they associate with the opponent to the applicant’s goods. This would make the marketing of the applicant’s goods considerably easier.

∙ The attractive power of the opponent’s marks goes beyond the sector of energy drinks and certainly extends to beverages and their preparations in general, as well as to beverage-related services covered by the mark applied for, such as the retail of beverages and services providing food and drink.

∙ The earlier marks enjoy a reputation of exceptional strength that would more readily enable the positive qualities of these marks to be transferred to the mark applied for and, as a result, strengthen the power of attraction of the mark applied for. Reference is made to various judgments of the General Court confirming the aforesaid fact.

∙ The application is always used in a typeface very similar to the typeface of the opponent’s Austrian trade mark (with evidence, for example, on the opponent’s Facebook page, in pictures from the opponent’s website and in the use of the application on various bottles of a turnip beverage). Although the ‘SALGAMBULL’ drink seems to be currently sold only in Turkey, the application in the EU reveals that an extension to the EU market is intended; this would undoubtedly take unfair advantage of the opponent’s well-known brand in a wholly unjustified manner.

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C-252/07, Intel, EU:C:2008:655, § 36.)

On the basis of the above, the Opposition Division concludes that the contested trade mark is likely to take unfair advantage of the distinctive character or the repute of the earlier trade marks.

In the Opposition Division’s view, there is a probability of free-riding in the circumstances of this case. The opponent has put forward a coherent line of argument showing how unfair advantage would occur and that it is indeed likely in the ordinary course of events. The long-established use and recognition of the earlier marks makes it probable that consumers’ commercial behaviour would be swayed in favour of the applicant’s goods solely because they are commercialised under the contested sign. That would result in a transfer of the goodwill of the earlier reputed marks in favour of the applicant’s trade mark. Consequently, as held by the opponent, the economic advantage would consist of exploiting the effort expended by the opponent to establish the reputation and the image of its earlier trade marks, without paying any compensation in exchange.

In conclusion, the Opposition Division considers that, because of the existing link between the signs and because of the reputation of the earlier marks, the use of the contested sign for the abovementioned goods and services constitutes unfair advantage to the applicant. However, as explained above, this does not apply to the contested services for which no such link could be established.

Other types of injury

The opponent also argues that use of the contested trade mark would be detrimental to the distinctive character and repute of the earlier trade marks and lead to dispersion of the identity of the earlier marks (dilution).

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an opposition to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Opposition Division has already concluded that the contested trade mark would take unfair advantage of the distinctive character or repute of the earlier trade marks. It follows that there is no need to examine whether other types also apply. Furthermore, there is also no need to examine the other types of injury for the services for which no link was established.

Conclusion

Considering all the above, the opposition is well founded under Article 8(5) EUTMR insofar as it is directed against the following goods and services:

Class 43: Services for providing food and drink.

The opposition is not successful insofar as the remaining services are concerned. Furthermore, the opposition is also not successful as regards the other two earlier marks for which Article 8(5) EUTMR was also invoked, namely (a) international trade mark registration No 1 064 924 designating Cyprus, Germany, Estonia, Finland, Greece, Croatia, Italy and Romania for the word mark ‘BULL’ for goods in Class 32 and (b) international trade mark registration No 1 108 568 designating the European Union for the figurative mark 1108568 for goods and services in Classes 32 and 43. This is because no reputation has been proven for earlier right (a), namely for the word ‘BULL’ on its own, and earlier right (b) contains further distinctive figurative elements, such as the depiction of two fighting bulls in front of a circle, which are not present in the contested trade mark. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected.

Therefore, the Opposition Division will now proceed to analyse the opposition under the other ground claimed and for the remaining services only.

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s EUTM registration No 698 720 and Austrian trade mark registration No 277 453.

The goods and services

The goods and services on which the opposition is based are the following:

EUTM registration No 698 720

Class 32: Beers; mineral and aerated waters and other non-alcoholic drinks; energy and sports drinks; isotonic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages; coffee and cocoa preparations for making alcoholic and non-alcoholic beverages.

Class 42: Bar and restaurant services.

Austrian trade mark registration No 277 453

Class 32: Non-alcoholic beverages; soft drinks; energy drinks; whey beverages; refreshing drinks; hypertonic and hypotonic drinks (for use and/or as required by athletes); isotonic beverages; beers; malt beers; wheat beers; porter; ale; stout; lager; mineral waters; table waters and aerated waters; fruit beverages and fruit juices; non-alcoholic vegetable or fruit juice beverages and non-alcoholic fruit extracts; syrups and other preparations for making beverages and syrups for lemonade; pastilles and powders for effervescing beverages; non-alcoholic aperitifs and cocktails; sherbets [beverages]; smoothies.

Class 35: Advertising; sales promotion for others; arranging of advertising events and space; distribution of goods for advertising purposes; layout services for advertising purposes; on-line advertising on a computer network; rental of advertising time on communication media; news clipping services; business organization consultancy; business management; business administration; office functions; rental of vending machines; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods; compilation of statistics; sponsorship search; commercial administration of the licensing of the goods and services of others; administrative processing of purchase orders; updating of advertising material; dissemination of advertising matter; arranging newspaper subscriptions for others; arranging subscriptions to telecommunication services for others; business information; commercial information agencies; compilation of information into computer databases; systemization of information into computer databases; public relations; publication and writing of publicity texts; radio advertising; production of radio and television commercials; rental of advertising space; television advertising; outdoor advertising; demonstration of goods; presentation of goods on communication media for retail purposes; sales promotion for others; commercial information and advice for consumers; opinion polling.

Class 43: Services for providing food and drink; bar services; cafès; cafeterias; canteens; snack bars; restaurants; self-service restaurants; food and drink catering; services for providing food and drink and temporary accommodation; hotels, boarding houses; holiday camp services [lodging], tourist homes and motels; temporary accommodation reservations; boarding for animals; rental of transportable buildings, bars and tents; rental of chairs, tables, table linen, glass ware, cooking apparatus and bar equipment.

The remaining contested services to be compared are the following:

Class 43: Temporary accommodation; Day-nurseries (crèches); Boarding for animals.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Some of the contested services are identical to goods and services on which the opposition is based. For reasons of procedural economy, the Opposition Division will not undertake a full comparison of the goods and services listed above. The examination of the opposition will proceed as if all the contested services were identical to those of the earlier mark.

Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods and services assumed to be identical are directed at the public at large and at business customers with specific professional knowledge or expertise.

The degree of attention may vary from average to high, depending on the specialised nature of the goods, the frequency of purchase and their price.

The signs

RED BULL

(1)

AT502013000050342

(2)

viewimage?imageId=123851359&key=8f3757ca0a8408037a774652b81acf41

Earlier trade marks

Contested sign

The relevant territory is the European Union (in relation to earlier mark 1) and Austria (in relation to earlier mark 2).

The signs have already been compared above under the grounds of Article 8(5) EUTMR and reference is made to the findings there. As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will continue.

Distinctiveness of the earlier marks

The distinctiveness of the earlier marks is one of the factors to be taken into account in the global assessment of likelihood of confusion.

According to the opponent, the earlier trade marks enjoy a high degree of recognition among the relevant public in connection with some of the goods and services for which they are registered, namely energy drinks. This claim must be properly considered given that the distinctiveness of the earlier trade mark must be taken into account in the assessment of likelihood of confusion. Indeed, the more distinctive the earlier mark, the greater will be the likelihood of confusion, and therefore marks with a highly distinctive character because of the recognition they possess on the market, enjoy broader protection than marks with a less distinctive character (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 18).

Having examined the material listed above in the ‘Reputation’ section based on the grounds under Article 8(5) EUTMR and concluded that the earlier marks are reputed for energy drinks, the Opposition Division concludes that the earlier trade marks have obviously also acquired a high degree of distinctiveness through their use on the market, but for energy drinks only.

Global assessment, other arguments and conclusion

The additional and different elements of the marks are clearly perceptible and sufficient to exclude any likelihood of confusion between the marks as regards the relevant services, also bearing in mind that the coinciding element is not split or visually outstanding in the contested sign.

Evaluating likelihood of confusion implies some interdependence between the relevant factors and, in particular, a similarity between the marks and between the goods or services. Therefore, a lesser degree of similarity between goods and services may be offset by a greater degree of similarity between the marks and vice versa (29/09/1998, C-39/97, Canon, EU:C:1998:442, § 17).

The signs are similar to only a certain degree and an enhanced degree of distinctiveness of the earlier signs was found only for energy drinks and not for the opponent’s services. The opponent’s energy drinks are clearly dissimilar to the abovementioned remaining contested services.

Considering all of the above and the fact that the marks are similar only in respect of the element ‘BULL’, and even though the opponent’s services were assumed to be identical to the contested services, the similarity between the signs is not sufficient to find a likelihood of confusion. This is not only and not mainly because the relevant public’s attention is deemed to be higher than average as regards the majority of the relevant services (in contrast with the goods), but also because the earlier marks’ verbal element ‘Red’ is as distinctive as the word ‘Bull’ in relation to the services in question, as services cannot have a colour. Similarly, the contested sign’s verbal element ‘SALGAM’ is as distinctive as the element ‘BULL’ for the services in question and does not describe any characteristic of the services (in contrast with the goods; see the findings under the section ‘Reputation – Article 8(5) EUTMR’).

Consequently, the conflicting signs have different, distinctive, beginnings and the coinciding element is not split or visually outstanding in the contested sign. It therefore has to be borne in mind that consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Adding to these facts the higher degree of attention of the relevant public as regards the majority of the services in question, the Opposition Division considers that a likelihood of confusion can be excluded.

The opponent refers to previous decisions of the Office to support its arguments. However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T-281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decisions submitted to the Opposition Division are to some extent factually similar to the present case, the outcome may not be the same.

Considering all the above, even assuming that the goods and services are identical, there is no likelihood of confusion on the part of the public for the abovementioned remaining contested services. Therefore, the opposition must be partially rejected.

The opponent has also based its opposition on the following earlier trade marks:

international trade mark registration No 1 064 924 designating Cyprus, Germany, Estonia, Finland, Greece, Croatia, Italy and Romania for the word mark ‘BULL’ for goods in Class 32 (claiming Article 8(5) and 8(1)(b) EUTMR);
international trade mark registration No 1 108 568 designating the European Union for the figurative mark for goods and services in Classes 32 and 43 (claiming Article 8(5) and 8(1)(b) EUTMR);
international trade mark registration No 1 115 937 designating the European Union for the figurative mark for services in Class 35 (claiming Article 8(1)(b) EUTMR).

Some of the other earlier rights (2 and 3) invoked by the opponent are less similar to the contested mark. This is because they contain additional figurative elements, such as the depiction of two fighting bulls in front of a circle, which are not present in the contested trade mark. Moreover, they cover a narrower scope of goods and services, and this applies to all three of the other earlier rights. In addition, the goods covered by earlier rights 1 and 2 are clearly dissimilar to the remaining contested services because they differ in their nature, purpose, method of use and producers/providers and they are neither complementary nor in competition. Therefore, the outcome cannot be different with respect to goods and services for which the opposition has already been rejected; no likelihood of confusion exists with respect to those goods and services.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division will decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods and services, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Renata COTTRELL

Swetlana BRAUN

Denitza STOYANOVA-VALCHANOVA

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.

SALGAMBULL | Decision 2696105 - Red Bull GmbH v. TANIR MURAT

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