Insights overview

Red Bull GmbH v Big Horn UK Limited & others [2020] EWHC 124 (Ch)

In the matter of alleged trade mark infringement by Big Horn UK Limited, Voltino Eood and Lyubomir Enchev (the Defendants) against registered EUTMs of Red Bull (the Claimant).

Background

In February 2018, RB brought infringement proceedings against the Defendants on the basis that they used signs similar to RB’s trade marks on energy drinks and bottled water in the UK and EU (Articles 9(2)(b) and (c) and 9(3)). Note that this judgement concerns the First and Third Defendants only as judgment against the Second Defendant issued in October 2019.

The First Defendant, Big Horn UK Limited, is a UK company set up by the Third Defendant, Mr Enchev (who is the sole director), in May 2017 to sell the goods subject of these proceedings.

Due to various issues (solicitors ceasing representation, failure to participate in CMC and pre-trial review and health issues), the trial eventually took place with Mr Enchev attending via conference call.

Marks

RB Trade Marks	Big Horn Signs
EUTM No. 3629342
EUTM No. 52746
EUTM No. 1564301

Link to Second Defendant

In August 2016, the Second Defendant filed an EUTM application for the first device above, which RB opposed (refused registration on 7 January 2019). However, Big Horn energy drinks started to sell in the UK and Bulgaria regardless. RB’s test purchases found the cans were identical in shape and size.

As the First and Third Defendants did not serve any witness evidence or disclosure, the precise nature of their involvement with the Second Defendant was unclear. However, it is not disputed that the First Defendant imported and sold energy drinks in the UK and Mr Enchev was the “controlling mind”.

At trial, Mr Enchev said he started negotiations with the Second Defendant in April 2017 to be a distributor of the Big Horn energy drinks. A contract (undisclosed) was entered in to in May 2017 and terminated on 1 March 2019 (although advertising was ongoing after termination).

Article 9(2)(c)

Given the marks cover the same goods and are visually and conceptually similar, the Judge found that the Big Horn signs would cause the average consumer to link those signs with RB’s trade marks. As there was no evident due cause, use of the Big Horn signs took unfair advantage of the distinctive character and reputation of RB’s trade marks.

The Judge held “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”.

Article 9(2)(b)

The Judge declined to consider likelihood of confusion in detail, but said he “would not have been persuaded that the Big Horn signs give rise to a likelihood of confusion …Rather, it [is] 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”.

Decision

Accordingly, use of the Big Horn signs infringed RB’s rights under Article 9(2)(c).

Further, being the sole director, Mr Enchev was liable with Big Horn UK Limited as a joint tortfeasor.

Key Points

a finding of unfair advantage to the distinctive character or reputation of a mark does not also mean that there is a likelihood of confusion
if you are a sole director, there is a high chance that you will be liable as a joint tortfeasor

This article was first published in the May 2020 issue of CITMA Review, the journal of the Chartered Institute of Trade Mark Attorneys (CITMA). For more information on CITMA, please visit their website here.