NIPC Law

RED DAWG RED BULL Jane Lambert Chancery Division (Mr Justice Adam Johnson)  Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch) (12 Aug 2022) One of the grounds for opposing a trade mark is that it is identical with or similar to an earlier trade mark that has a reputation in the United Kingdom and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.  That raises the question of what constitutes "unfair advantage" of an earlier mark.  A case that sheds light on that issue is Mr Justice Adam Johnson's decision in  Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch) (12 Aug 2022), This was an appeal against Mr James Hopkin's decision in Re RED DAWG trade mark, Red Bull GmbH v Momster Energy Company  in BLO/636/21 of 26 Aug 2021 refusing registration of trade mark number 3497054 under s.5 (3) of the Trade Marks Act 1994.  He set...

Jane Lambert Chancery Division (Kelyn Bacon QC) Red Bull GmbH v Big Horn UK Ltd and other s [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 rele...

Jane Lambert Chancery Division (HH Judge Hacon)  Fromageries Bel SA v J Sainsbury Plc [2019] EWHC 3454 (Ch) (12 Dec 2019) This was an appeal against Mr Allan James's decision  of 13 Feb 2019 that the registration of the above 3-dimensional sign under trade mark number UK2060882  was invalid. The hearing officer held that 'the colour red' in the description of the mark was insufficiently clear or precise and that a particular hue of red should have been specified. The proprietor's grounds of appeal were as follows: "(1) The Hearing Officer erred in applying the Sieckmann criteria to a mark that is not a colour mark per se. (2) The Hearing Officer erred in failing to interpret the registration as being limited to the red colour shown in the pictorial representation of the registered mark. (3) Alternatively, if the Sieckmann criteria apply to a mark that is not a colour mark per se and if the registration was not already limited, then the...

The IPO in Newport - where the hearing officers are to be found Crown Copyright Licensed by the IPO Jane Lambert An exception to the rule that a trade mark registration cannot be challenged for non-use in the first 5 years after registration is where the application to register the trade mark was made in "bad faith". The legislative mechanism is provided by s.47 (1) of the Trade Marks Act 1994: "The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of section 3 or any of the provisions referred to in that section (absolute grounds for refusal of registration)." Subsection (6) of s.3 provides: "A trade mark shall not be registered if or to the extent that the application is made in bad faith." But what does "bad faith" mean exactly? In  Hotel Cipriani SRL and Others v Cipriani (Grosvenor Street) Ltd and others   [2009] Bus LR D81, [2008] EWHC 3032 (Ch), [2...

Amsterdam   Source Wikipedia According to Wikipedia  Red Bull is the most popular energy drink in the world, with 5.2 billion cans sold in 2012. Its manufacturer, Red Bull GmbH , has registered the RED BULL mark has registered those words and their accompanying logo as word and device marks in trade mark registries around the world including the Benelux Office for Intellectual Property ( "BOIP" ) . The company registered that sign with BOIP for non-alcoholic drinks in class 32 with effect from 11 July 1983. After decades of massive sales and extensive advertising nobody could argue that that mark has a reputation within the meaning of art 5 (2) of the Trade Marks Directive (Directive 2008/95/EC of the European Parliament and the Council of 22 October 2008   to approximate the laws of the Member States relating to trade marks OJ 8.11.2008 p 299/25).  S.10 (3) of our Trade Marks Act 1994   implements that provision. There is in the Net...