Scope of Protection of Renowned Marks

On the basis of its RED BULL- and BULL-marks for alcoholic and non-alcoholic drinks and class 3 goods like perfumes, the firm behind RED BULL has requested cancellation of the word mark PITBULL and the device mark showing in the center the head of a pit-bull terrier with the word PITBULL above it and below the words "get the Power". These marks were registered for identical goods so that there was no controversy about this point.

The Supreme Patent and Trademark Senate agreed in its decision (OM 5/10) with the first instance that the marks PITBULL were not confusingly similar to RED BULL or BULL even considering the distinctiveness high above average through intensive use of RED BULL. The similarity of one feature (sound, picture, meaning) can be offset by differences in another feature when these differences are recognised by the consumers immediately. In all marks RED BULL and BULL the English meaning of BULL as male cattle immediately springs to mind. The trade mark PITBULL in its composite form has the meaning of a breed of dog known for its aggressiveness. In sound, similarity could only exist with the mark BULL, but since PITBULL is not pronounced in separate words and its emphasis lies on the first syllable, not on the word part BULL, this similarity in sound is of minor weight. Also the picture of the respective picture marks are different. It has to be assumed that average consumers are sufficiently informed about the different meaning of the two signs. Moreover, consumers of energy drinks are usually attentive to the trade marks of such drinks and therefore will note the difference immediately. Therefore, there is no danger of confusion between these marks.

However, the extended protection of renowned marks though regulated only for non-similar goods must also apply to cases of identical goods (see European Court of Justice (ECJ) in C-292/00 Davidoff). The protection of renowned marks does not presuppose the danger of confusion of the marks but necessitates nevertheless such a similarity that the circles concerned associate the younger mark with the older since only by this typically a younger mark can take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark (see ECJ in C-408/01 Adidas or C-487/07 l'Oreal). The fame of the mark RED BULL has been proven at several instances and cannot be doubted also for the priority dates of the mark PITBULL. An association of the marks has to be affirmed due to the part BULL in PITBULL which is not totally disguised in it and is also recognisable in the device mark. The consumers concerned will also think of an energy drink when seeing the part BULL and of the renowned mark RED BULL.

A renowned mark is only protected against attacks of their distinctive character and repute. For this the mere existence of similarity in the sense of association does not suffice (see ECJ in C-252/07 Intel Corporation or C-487/07 l'Oreal). The use of a similar sign (for identical or similar goods) suggests itself unfair motives since the repute of famous marks can easily be used for one's own advantage. The same is true for taking advantage of the distinctive character of the renowned mark.

In the present case, without doubt the owner of the younger mark takes unfair advantage of the famousness of the older marks. Through the use of the essential part BULL of the famous mark in his marks PITBULL he wants to draw the attention of the public to this product. The attraction of the mark PITBULL for him apparently lies in this association. Therefore, the serious danger exists that the use of the mark PITBULL will change the economic behaviour of the average consumer in the future, which is sufficient as proof for the detriment of the distinctive character of the renowned mark (see ECJ in C-252/07 Intel).

DI Helmut Sonn