Broken wings

As already reported some time ago (news April 2011) RED BULL's trade mark "FLÜGERL" (meaning "small wings" in the German language) had been cancelled as the Austrian Supreme Court found the sign was only used in a descriptive manner for alcoholic drinks, but not as a designation of origin.

After cancellation of the "FLÜGERL" trade mark, bottles containing an alcoholic drink were offered on the Austrian market under the name "FLÜGEL" (meaning "wings"), whereas the term was used in combination with a cartoon figure showing a pink duck.

As RED BULL uses the slogan "gives you wings" extensively to advertise its energy drink, RED BULL was not amused and filed a trade mark infringement action based on the their registered trade marks, whereas it was argued that "FLÜGEL" itself owns distinctive character.

Without explicitly ruling on the distinctiveness of the part the registered trade marks, the Austrian Supreme Court found that there is no likelihood of confusion whatsoever as the term "FLÜGEL" and the distinctive pink duck were superposed. Due to this superposition the word element itself did not produce an independent distinguishing character on the relevant public. Accordingly, the Supreme Court found that there was no likelihood of confusion between the overall impression of the allegedly infringing sign and the trade mark in suit.

The Supreme Court made it very clear that there is a clear distinction between the use of signs where - especially - word elements are juxtaposed as opposed to combination signs where figurative and word elements are superposed as in the later case the figurative element generally is not recognised as designation of origin and therefore does not fulfil the essential function of a trade mark.

What seems most interesting is, whether the same standards for being recognised as designation of origin should be applied in infringement and revocation actions. As known, there are presently two cases pending before the CJEU (C-12/12, C-252/12) with respect to the questions of genuine use where a figurative mark and a position mark, respectively, are superposed by a word element.

Accordingly, if the test for being not recognized as a designation of origin as set up by the Austrian Supreme Court is also applied in these cases by the CJEU the figurative mark and a position mark, respectively, would not have been used genuinely use and should therefore be cancelled due to non-use.

Dr Rainer Beetz, LL.M.