Red Bull GmbH v. Svetcom Trading Limited

The contested decision is not entirely clear as to the type of injury that the earlier mark would suffer from the use of the later mark. The CD ‘concludes that use of the later mark would not only ‘take unfair advantage but also ‘be detrimental to the distinctive character or the reputation of the earlier mark, without explaining why. In the Boards view, the injury that is most likely to occur, if the RED DOG mark is used, is a dilution of the distinctive character of the RED BULL mark. The distinctive character of the earlier mark is the result of the association of a bright colour (red) to an animal generally perceived as strong and aggressive. In mind of the consumers, the RED BULL mark is certainly perceived as ‘original and very strongly associated to a particular product. A trade mark based on a similar (though not identical) association - and used for precisely the same beverages - could well be perceived by those consumers as an imitation or a ‘me too sort of product, i.e. a cheaper alternative. Common experience shows that part of the public will stay faithful to the ‘original product but that another part will trade down and purchase the ‘copy. This is the sort of phenomenon that, in the Boards view, the ECJ had in mind when it stated that the proof that the use of the later mark would be detrimental to the distinctive character of the earlier mark requires evidence of a ‘change in the economic behaviour of the average consumer of the goods for which the earlier mark is registered. In the Boards view, the cancellation applicant has managed to show convincingly the probability of this economic phenomenon taking place in respect of its mark. As to the CTM proprietors argument that no such phenomenon is likely to affect the RED BULL mark because other RED-based marks for energy drinks already exist on the mark, in the Boards view, the evidence submitted is not conclusive or concerns trade marks that are not comparable. The appeal is dismissed.