The UK High Court has recently rejected an appeal filed by Monster Energy to register its trademark "Red Dawg" due to the fact that this mark could take unfair advantage of "Red Bull".
Let's take a closer look at the case.
Monster Energy and Red Bull are two key players in the energy drinks sector. In 2020, Monster Energy filed an application to register the trademark "Red Dawg" in the UK designated to non-alcoholic beverages in Class 32. Unsurprisingly, Red Bull opposed the application on the basis of potential confusion among related public and potential unfair advantage of its earlier mark "Red Bull".
The case was held before the UKIPO, which held that:
1. There would be no likelihood of direct or indirect confusion between the two marks;
2. But "Red Dawg" would likely appear familiar to consumers to the extent that they could have misled them to associate the sign with Red Bull products, which allows Monster Energy to establish and promote its trademark by free-riding the goodwill established by Red Bull;
3. Therefore, the opposition application of Red Bull shall be upheld based on unfair advantage.
Monster Energy then appealed to the UK High Court and argued that they had no intention to take advantage of Red Bull's reputation, and there was no evidence to prove that there was a potential free riding by "Red Dawg" on the "Red Bull" trademark.
The result of the dispute is that the High Court did not support the arguments of Monster Energy. It deemed that Monster Energy had chosen the name "Red Dawg" in order to gain a commercial advantage, which, even if the consumers are not necessarily confused with the two marks, would remind them of "Red Bull" and create an impact to their economic behaviors.
Monster Energy, therefore, would be able to establish its brands without marketing or advertising and sell its products more easily by taking advantage of the reputation and popularity of "Red Bull".
So even though Monster Energy did not have a subjective intention, "Red Dawg" would still gain an unfair commercial advantage by free-riding "Red Bull".
Monster Energy's appeal request has thus been dismissed by the High Court.
The case demonstrates that even if the similarity between two signs is not enough to cause confusion, there may still be a link between them as long as the sign chosen would make it easy to sell its products without incurring necessary marketing costs.
The case is also a positive sign to the owners of established brands who seek to protect themselves from free riders. Based on the final outcome of the case, the interpretation of unfair advantage is subjective, so brand owners could still manage to enforce their rights without having to prove free riders' actual subjective intent of benefiting from a prior mark.
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