Red Bull GmbH v Sun Mark Ltd & Anor

Trade mark infringement through likelihood of confusion requires a global assessment through the eyes of the average consumer. The allegedly infringing sign must be considered in the context of its actual use.

Protection for a mark with a reputation requires a link in the consumer’s mind and at least one relevant injury. An intentional attempt to exploit the mark’s attraction, reputation or prestige may constitute unfair advantage, subject to due cause.

For bad faith, the applicant’s subjective intention is determined from objective circumstances at the application date. A possible or contingent future intention to use may be sufficient. Its sufficiency depends on all the circumstances, including any evidence of abuse of the registration system.

Red Bull claimed that the defendants infringed its international registrations for BULLIT by selling an energy drink under BULLET. It also alleged infringement of its Community trade mark for RED BULL through the advertising strapline NO BULL IN THIS CAN.

The defendants denied infringement and counterclaimed that the BULLIT registrations were invalid because Red Bull lacked a genuine intention to use the mark in the United Kingdom and had therefore acted in bad faith. The court had to determine likelihood of confusion, infringement of a mark with a reputation, and whether a possible future intention to use supported Red Bull’s declarations under the Madrid system.

1. The infringement claims succeeded and the bad-faith counterclaim failed. BULLIT and BULLET were visually, aurally and conceptually very similar. Energy drinks were identical to goods covered by the registrations. Having regard to the average consumer’s level of attention and imperfect recollection, there was a clear likelihood of confusion under article 5(1)(b) of the Directive 2008/95/EC and section 10(2) of the Trade Marks Act 1994. Evidence of actual confusion was unnecessary: paras 79–86.

2. RED BULL had a substantial reputation. Use of BULL in the context of NO BULL IN THIS CAN called RED BULL to the average consumer’s mind. The strapline promoted the defendants’ cheaper competing drink by exploiting that reputation. The defendants intended, at least in part, to obtain that advantage. Viewed globally, this was unfair advantage and infringement under article 9(1)(c) of the Regulation 207/2009/EC: paras 99–109, 112.

3. The humorous play on words did not persuade the court that the strapline was detrimental to RED BULL’s repute. That conclusion did not affect liability because proof of one relevant injury was sufficient. The defendants advanced no due cause: paras 110–112.

4. An international treaty does not become domestic law merely because a court must take judicial notice of it. The Common Regulations under the Madrid system therefore did not themselves form part of domestic law. Red Bull nevertheless made, or was deemed to have made, the declarations of intention to use associated with its authorised UK designations: paras 126–128, 166–174.

5. Bad faith is assessed at the application date, although later evidence may illuminate the applicant’s position then. It includes dishonesty and commercial conduct falling below acceptable standards. The tribunal must determine the applicant’s knowledge and intention from objective circumstances and make an overall assessment: paras 130–138.

6. A possible or contingent intention to use a mark at a future date may suffice for a good-faith declaration. Whether it suffices depends on all the circumstances and on the presence of factors suggesting abuse: paras 161–163. Red Bull lacked a concrete intention to use BULLIT in the United Kingdom at the relevant dates but contemplated future use, most probably for energy drinks. That was sufficient for the goods material to infringement. The registrations were therefore not shown to have been sought in bad faith: paras 190–194.

not stated in the judgment.