Red Bull successfully enforces two colour trade marks

The famous Austrian manufacturer of energy drinks Red Bull recently successfully enforced CTM 2534774, a trade mark consisting of blue and silver, whereas these two colours make up half of the mark each.

Red Bull sued the owner of the Polish trade mark "Run Cool" who consented to the production of an accordingly labelled energy drink in Austria. Additionally, the action was based on different figurative "Red Bull" marks.

The first instance court found that the colour combination of blue/silver was known to 54 % of the total population in Austria and to 89 % of consumers of energy drinks. A similar awareness has been proven for Poland, Spain and the Netherlands. The "Red Bull" logo was proven even to be more famous.

The first instance court cited the relevant case law of the CJEU (C-49/02 Heidelberg Bauchemie), according to which concrete and abstract colour marks that have acquired distinctiveness through use are eligible for protection provided that the application contains a systematic arrangement of the respective colours and they are connected in a predetermined and uniform way. Accordingly, the first instance court found infringement of colour mark as well as the figurative marks in suit. Additionally, the defendant was also found liable for taken unfair advantage of the reputation and the advertising expenses of the claimant, i.e. passing off.

The Court of Appeal and also the Austrian Supreme Court fully agreed. The Supreme Court found that validity of the colour mark must not be examined as the defendant had not filed a counterclaim for cancellation (the defendant merely argued invalidity of the colour mark). However, if the trade mark in suit originally lacked any distinctive character and distinctiveness was acquired through use, this distinctive character must always be presented throughout the EU.

On the other hand the Supreme Court found that the requirements for special protection of famous trade marks were met. Reputation must (only) be present in a substantial part of the EU, whereas in principle the territory of a Member State can be considered a significant part (C-301/07 Pago). As reputation was proven for Austria, the lower courts were right in finding that the defendant infringed the colour mark by taking unfair advantage of the famous mark. The different word elements as well as the addition of the yellow parts on the can do not exclude the link which is caused by the similarity of the colours.

The most interesting part of this decision was that the Supreme Court differentiated between the territorial scope necessary to acquire distinctive character, the whole EU, and the territorial scope necessary to acquire reputation, which is only a significant part, so one country, of the EU. Given the fact that it seems that Red Bull "only" proved acquisition of distinctive character through use in a few countries during prosecution and that OHIM's register shows that a few requests for cancellation were filed in recent months, this victory looks likely to be only the beginning of Red Bull's fight for its two colour marks.

Dr Rainer Beetz, LL.M.