Trade Marks - Red Bull GmbH v Big Horn UK Ltd and Others

Jane Lambert

Chancery Division (Kelyn Bacon QC) Red Bull GmbH v Big Horn UK Ltd and others [2020] EWHC 124 (Ch) (30 Jan 2020)

This was a claim by Red Bull GmbH against Big Horn UK Ltd. and its sole director  Lyubomir Enchev. for infringement of the following European trade marks: EU003629342, EU000052746 and EU001564301  Red Bull complained that the defendants had distributed a drink in Bulgaria and the UK that has been manufactured by a Polish company under the signs that appear in the right-hand column of the table in paragraph 6 of the transcript.  The action came on for trial before Kelyn Bacon QC between 15 and 17 Jan 2020. The learned deputy judge gave judgment to the claimant on 30 Jan 2020.

Red Bill alleged that Big Horn and Mr Enchev had infringed its rights under art 9 (2) (b) and (c) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the Community trade mark (codified version) (Text with EEA relevance) OJ L 78, 24.3.2009, p. 1–42  In respect of the claim under art 9 (2) (b) Ms Bacon referred to paragraph [285] of Mr Justice Arnold's judgment in Sky Plc and others  v Skykick UK Ltd and another [2018] EWHC 155 (Ch) (6 Feb 2018) [2018] EWHC 155 (Ch):

"(i) there must be use of a sign by a third party within the relevant territory; (ii) the use must be in the course of trade; (iii) it must be without the consent of the proprietor of the trade mark; (iv) it must be of a sign which is at least similar to the trade mark; (v) it must be in relation to goods or services which are at least similar to those for which the trade mark is registered; and (vi) it must give rise to a likelihood of confusion on the part of the public."

As for the claim under art 9 (2) (c) she referred to paragraph [111] of Lord Justice Kitchin's judgment in Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41 (8 Feb 2016):

"(i) the registered trade mark must have a reputation in the relevant territory; (ii) there must be use of a sign by a third party in the relevant territory; (iii) the use must be in the course of trade; (iv) it must be without the consent of the proprietor; (v) it must be of a sign which is identical with or similar to the trade mark; (vi) it must be in relation to goods or services; (vii) it must give rise to a link between the sign and the trade mark in the mind of the average consumer; (viii) it must give rise to one of three types of injury, that is to say, (a) detriment to the distinctive character of the trade mark, (b) detriment to the repute of the trade mark, or (c) unfair advantage being taken of the distinctive character or repute of the trade mark; and (ix) it must be without due cause."

Red Bull complained that Big took unfair advantage of the distinctive character or reputation of its EU trade marks.

At para [25] of her judgment, the deputy judge noted that it was not in dispute that 

• Big Horn (at least) had used the disputed Big Horn signs in the course of trade within the EU (and in particular in the UK) and without the consent of Red Bull, 
• Big Horn's signs had been used in relation to goods and services, 
• Red Bull's trade marks had been, for many years, well known within the EU, or 
• Red Bull's marks had the reputation required for the purposes of art 9 (2) (c).  

The issues that she had to decide were: -

1. Whether the disputed Big Horn signs were at least similar to the Red Bull trade marks, were used on similar goods, and gave rise to a likelihood of confusion on the part of the public within the meaning of art 9 (2) (b);
2. Whether the disputed signs were at least similar to the Red Bull trade marks, gave rise to a link between the sign and the trade mark in the mind of the average consumer, and thereby led to unfair advantage being taken of the distinctive character or reputation of the Red Bull trade marks, without due cause, within the meaning of art 9 (2) (c), and
3. Whether Mr Enchev was personally liable for any infringement as a joint tortfeasor.

Ms Bacon started with the second issue.  After comparing each of the defendants' signs in the right-hand column od the table in paragraph [6] of her judgment with the marks in the centre column, she considered that all three signs were visually and conceptually similar to Red Bull's EU trade marks. She directed herself that in considering whether the use of a disputed sign gives rise to a link between that sign and the relevant trade mark in the mind of the average consumer, it is necessary to make a global assessment having regard to all the circumstances of the case. Referring to paragraphs [309] and [314] of Sky v Skykick, she added that the same is true in relation to the question of whether the use of a sign takes unfair advantage of the distinctive character or reputation of the mark.  

From paragraph [44] of the Court of Justice's decision in C-87/07, L'Oreal SA and others v Bellure NV and others  [2010] Bus LR 303, [2009] ETMR 55, [2009] ECR I-5185, [2009] EUECJ C-487/07, [2010] RPC 1, she held that relevant factors include the strength of the mark's reputation, the degree of distinctive character of the mark, the degree of similarity between the marks, and the nature and degree of proximity of the goods or services concerned. The more immediately and strongly the mark is brought to mind by the sign, the greater the likelihood that the use of the sign is taking, or will take, unfair advantage of the distinctive character or reputation of the mark.  She quoted paragraph [49] of that judgment:

"where a third party attempts, through the use of a sign similar to a mark with a reputation, to ride on the coat-tails of that mark in order to benefit from its power of attraction, its reputation and its prestige, and to exploit, without paying any financial compensation and without being required to make efforts of his own in that regard, the marketing effort expended by the proprietor of that mark in order to create and maintain the image of that mark, the advantage resulting from such use must be considered to be an advantage that has been unfairly taken of the distinctive character or the repute of that mark."

Taking account of the global reputation and distinctiveness of Red Bull's marks, the visual and conceptual similarity of the accused signs to the marks, the use of those signs in relation to exactly the same goods as those for which the marks were registered, the size and style of packaging of the goods and the layout of Big Horn's Facebook page, the deputy judge considered that "the Big Horn signs would indeed be likely to cause the average consumer to link those signs with the Red Bull trade marks, and that the use by Big Horn of those signs takes an unfair advantage of the distinctive character and reputation of Red Bull's trade marks. 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, and to benefit from the very considerable marketing efforts of Red Bull to create a particular image associated with its trade marks."

Finding no "due cause" for the disputed use of the accused signs, Ms Bacon concluded at [41] that the use by Big Horn of the disputed Big Horn signs infringed Red Bull's rights under art 9 (2) (c) of Regulation 207/2009.

Having found for Red Bull under s.9 (2) (c) it was unnecessary to consider Big Horn's liability under art 9 (2) (b).  However, had she done, so she would not have been persuaded that the Big Horn signs gave rise to a likelihood of confusion on the part of the average consumer.  In her view, an average consumer was likely to be well aware of the differences between the signs and was not likely to consider a Big Horn product to be a Red Bull product, at any point. Nor did she consider that the level of similarity was such as to cause the average consumer to believe that the Big Horn products were economically linked to Red Bull's products.   it seems to her far more likely that the average consumer would perceive the Big Horn products as cheaper or alternative versions of Red Bull's products, stimulating sales of the former in a way that would not have occurred had the Big Horn signs not evoked so directly the visual and conceptual forms of the Red Bull trade marks. The concern was, therefore, one of free- riding, bringing the infringement within the scope of art 9 (2) (c), rather than actual confusion between the signs within the meaning of art 9 (2) (b).

Referring to paragraphs [21], [37] and [55] of  Sea Shepherd UK v Fish & Fish Ltd  [2015] 1 Lloyd's Rep 593, [2015] AC 1229, [2015] 2 WLR 694, [2015] 4 All ER 247, [2015] UKSC 10, [2015] 1 AC 1229, [2015] WLR(D) 102, [2015] 2 All ER (Comm) 867, Ms Bacon directed herself that a defendant will be liable as a joint tortfeasor if (i) the defendant has acted in a way that assisted the commission of the tort by the primary tortfeasor; and (ii) the defendant did so pursuant to a common design to do or assist with the acts that constituted the tort.  HH Judge Hacon had amplified that reasoning in Vertical Leisure Ltd v Poleplus Ltd and another  [2015] EWHC 841 (IPEC) (27 March 2015) at paragraph [66]:

"I interpret this to mean that in order to fix an alleged joint tortfeasor with liability, it must be shown both that he actively co-operated to bring about the act of the primary tortfeasor and also that he intended that his co-operation would help to bring about that act (the act found to be tortious). Liability will always be subject to the threshold requirement that the alleged joint tortfeasor's contribution to the act was more than de minimis."

In this case, there was no doubt that Mr Enchev's actions met the test set out in Sea Shepherd. Mr Enchev was the sole director and controlling mind of Big Horn. Following discussions with Voltino, he set up the company as a vehicle for the importation and marketing of the Big Horn energy drinks. He was directly responsible for Big Horn's activities. Mr Enchev controlled the domain on which Big Horn's website was hosted and the social media accounts on which Big Horn's products were advertised.  He not only assisted with but entirely controlled Big Horn's actions in importing, marketing and advertising the infringing products.

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