Red Bull GmbH v Big Horn UK Ltd & Ors

Use of a sign similar to a trade mark with a reputation may infringe where the sign creates a link with the mark and takes unfair advantage of its distinctive character or reputation, even though consumers are unlikely to be confused as to origin.

The assessment is global and considers the mark’s reputation and distinctiveness, the degree of similarity, and the proximity of the goods. A company director may be personally liable as a joint tortfeasor where he actively assists the company’s tort pursuant to a common design. Directorship alone neither excludes nor establishes liability.

Red Bull alleged infringement of three EU trade marks by Big Horn UK Ltd and its director, Lyubomir Enchev, in relation to energy drinks and bottled water bearing similar signs. Judgment had already been obtained against Voltino EOOD.

The court considered infringement under Article 9(2)(b) and (c) of the applicable EU trade mark regulations and Mr Enchev’s personal liability as a joint tortfeasor. The central issues were whether the signs created a link with Red Bull’s marks and took unfair advantage of their reputation, whether there was a likelihood of confusion, and whether Mr Enchev had sufficiently participated in Big Horn’s conduct.

1. Article 9(2)(c). The Big Horn signs were visually and conceptually similar to the Red Bull marks. The assessment of a link and unfair advantage required a global assessment of all the circumstances, including the strength of the reputation, the distinctive character of the mark, the degree of similarity, and the proximity of the goods. The signs were used for identical products, in identical-sized cans and overlapping retail contexts. They were designed to free-ride on Red Bull’s reputation and marketing investment. The requirements of Article 9(2)(c) were therefore satisfied.
2. No due cause was established. The earlier EUIPO decision rejecting Red Bull’s opposition did not confer trade mark rights on the defendants, and there was no evidence of reliance on that decision.
3. Article 9(2)(b). It was unnecessary to decide likelihood of confusion. If necessary, the claim under that provision would have failed. Although the average consumer’s attention would be low for inexpensive drinks, consumers would recognise the differences between the signs and would not believe that Big Horn products were Red Bull products or economically linked to Red Bull. The conduct was freeriding rather than confusion.
4. Joint tortfeasorship. Under Fish & Fish v Sea Shepherd, [2015] UKSC 10, [2015] AC 1229, liability required assistance in the commission of the tort pursuant to a common design. The contribution had to be more than de minimis and the defendant had to intend that the cooperation would assist the tortious act. The test was fact-sensitive.
5. Directorship neither excluded nor established joint liability. Mr Enchev set up Big Horn to import and market the products, controlled its website and social media accounts, and was its controlling mind. His involvement therefore satisfied the test.
6. Big Horn was liable for infringement under Article 9(2)(c) of both applicable regulations. Mr Enchev was liable with Big Horn as a joint tortfeasor. Permission was given to amend the Particulars of Claim to refer to the earlier regulation as well as the EUTMR.

First-instance proceedings. The judgment records earlier strike-out and summary judgment proceedings before Master Clark, and an adjournment ruling reported at [2020] EWHC 151 (Ch).