'Big Horn' signs infringe Red Bull's EU trade marks, says England and Wales High Court

One of the 'Big Horn' signs in question

Like many a world renowned brand, Red Bull has inevitably faced difficulties on the trade mark front, both in the registration and maintenance of its marks (see here), and in its opposition of ‘similar’ marks for which registration has been sought. However, in a decision of the England and Wales High Court (with Bacon QC sitting as Deputy High Court Judge), it was found that UK company 'Big Horn UK Limited’, and its director Mr Enchev as a joint tortfeasor, had infringed 3 of Red Bull’s EU trade marks. 

Background

The case concerned the marks pictured, in respect of which registration was sought in Class 32:

In August 2016, the second defendant in the case, Voltino (a Bulgarian company, judgment against which was obtained in October 2019) filed an application for an EU trade mark bearing the double ram and golden sun device shown, together with the words “Big Horn” to be used for goods including energy drinks and various types of water. Red Bull became aware of the application in September 2016 and filed an opposition in November 2016.

In the process of these opposition proceedings, Big Horn drinks appeared in the UK and Bulgaria. Red Bull’s test purchases found that Big Horn’s drinks were sold in cans of an identical shape and size to classic Red Bull cans, and in addition to the mark for which trade mark registration was sought, they also featured a geometric blue and silver design.

The proceedings emphasised the lack of clarity as to how Mr Enchev came to set up Big Horn UK Limited, but it was apparent that Mr Enchev had started negotiations with Voltino in April 2017 to incorporate a company to distribute Voltino’s ‘Big Horn’ energy drinks within the UK. Mr Enchev entered into a contract with Voltino in May 2017 (though the contents of the contract were not disclosed to the court) and was found to be the controlling mind of Big Horn UK Limited, also in charge of Big Horn UK’s social media accounts.

After a rejection of Red Bull’s opposition to the Big Horn mark on 23 May 2018, Red Bull’s appeal was upheld and Voltino’s trade mark application was rejected in its entirety on 7 January 2019. Mr Enchev was said to have terminated his contract with Voltino in March 2019. However advertising bearing the logo continued to appear on the company’s social media pages.

A strike out summary judgment application was sought by Red Bull. However following the judgment of Master Clark in November 2018, the application was dismissed and permission was given to the Defendants to amend their defences.

The present case therefore addressed the following questions:

1. Whether, within the meaning of Article 9(2)(b) of the EU Trade Mark Regulation (EUTMR), the disputed Big Horn mark was at least similar to the Red Bull trade marks, was used on similar goods, and gave rise to a likelihood of confusion;
2. Whether, within the meaning of Article 9(2)(c) of the EUTMR, the disputed Big Horn signs were at least similar to the Red Bull marks, giving rise to a link between the sign and the trade marks in the mind of the average consumer, so as to lead to unfair advantage being taken of the distinctive character or reputation of the Red Bull trade marks without due cause; and 
3. Whether Mr Enchev would be personally liable for any infringement as a joint tortfeasor.

Article 9(2)(c) EUTMR

Similarity

Starting with the Big Horn double ram sign, Bacon QC noted that the EUIPO Board of Appeal had found that there was some similarity between the sign and the Red Bull mark, even if it was low, as the marks “were unlikely to be overlooked by the average consumer”. It was similarly pointed out that both signs consisted of two silhouetted hoofed and horned aggressive animals charging, with their legs in similar positions captured before the moment of impact, in both cases in front of a background of a circle.

Bacon QC thus concluded that there was visual and conceptual similarity between Big Horn’s double ram sign and Red Bull's double bull mark. Visual and conceptual similarity was also found in relation to Big Horn’s blue and silver geometric device and Red Bull’s blue and silver parallelogram device (using approximately the same colour distributions, with angular geometric shapes and central yellow sun element), and in relation to Big Horn’s single ram and Red Bull’s single bull mark.

Link between the signs and the trade marks to constitute unfair advantage

Bacon QC took into account a number of factors when considering whether a link could be established (such that use would give an unfair advantage to Big Horn) - namely, that: the Red Bull trade marks had a global reputation and were highly distinctive; the Big Horn signs were being used for the same products as Red Bull (energy drinks and water); and were being sold in the same retail outlets as Red Bull drinks, in identically sized cans. Further comparisons could also be made between Big Horn and Red Bull products via their Facebook page, whereby the cans were placed directly next to each other. This inevitably led to the conclusion that Big Horn’s signs were designed so as to “enable Big Horn to free-ride on thee reputation of Red Bull”, and to benefit from Red Bull’s marketing efforts to create a particular image with its trade marks.

A question of free-riding, rather than actual confusion

Article 9(2)(b) EUTMR

Whilst it was no longer necessary to consider infringement under Article 9(2)(b), Bacon QC made it clear that the Big Horn signs would not have given rise to a likelihood of confusion on the part of the average consumer. On the contrary, the average consumer would likely perceive the Big Horn products as cheaper or alternative versions of Red Bull’s products.

Joint tortfeasorship

As set out in Fish & Fish v Sea Shepherd [2015] UKSC 10, a defendant will be liable as a joint tortfeasor if: (i) the defendant has acted in a way that assisted the commission of the tort by the primary tortfeasor; and (ii) the defendant did so pursuant to a common design to do or assist with the acts that constituted the tort.

Whilst the fact that Mr Enchev was a director of Big Horn would neither establish nor exclude liability, Mr Enchev was found to have fulfilled the test set out in Fish & Fish, since he set up the company for the importation and marketing of Big Horn drinks, controlled advertising via Big Horn’s social media accounts, and was directly responsible for Big Horn’s activities. It would not make any difference that the product was made by Voltino, nor that the sign was designed by them.