A Monster of a Case

A recent decision of the High Court of Justice of England & Wales has confirmed that brand owners can prevent other traders from free-riding off the reputations of their brands - even where there is no risk of a likelihood of confusion. 

In the case in question (Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch) (12 August 2022), Monster were prevented from registering RED DAWG as a UK trade mark.

Whilst the decision depended on the particular facts as determined by the judge, the case gives some useful guidance to determine when an owner of a registered UK trade mark, which has a reputation, can prevent other traders from free-riding off that reputation.

What was the case about?

The case related to an application by Monster to register the word mark RED DAWG as a UK trade mark for non-alcoholic beverages, which included energy drinks.

Red Bull opposed the application, relying on its earlier registered trade rights in respect of the word mark RED BULL.  

Red Bull asserted that Monster’s RED DAWG mark, when used in connection with the goods in issue, would give rise to a likelihood of confusion, with relevant members of the public concluding the goods came from Red Bull, due to the similarity of the marks and the goods in issue.   

It also asserted that the mark RED BULL has a reputation in the UK, in respect of energy drinks, and that use of the mark RED DAWG in connection with such goods would (even if there was no likelihood of confusion) take unfair advantage of the distinctive character or repute of its RED BULL trade mark.  

Monster disputed both allegations.

At first instance, before the UK IPO, the Hearing Officer held that there was no likelihood of confusion, but agreed with Red Bull that the mark RED BULL has a reputation in the UK, in respect of energy drinks, and that use of the mark RED DAWG in connection with such goods would (even if there was no likelihood of confusion) take unfair advantage of the distinctive character or repute of the RED BULL trade mark.

Monster sought to appeal that aspect of the decision before the High Court.

What was decided?

The Court upheld the first instance decision. Monster’s appeal failed and was dismissed.

The judge hearing the case agreed with the Hearing Officer that there was a risk of the mark RED DAWG “free-riding” on the reputation of the earlier RED BULL trade mark. That mark would be brought to mind by consumers upon encountering the mark RED DAWG, when used in connection with energy drinks. Registration and use of the mark RED DAWG would give Monster an unfair economic advantage, because:

• Monster chose the mark RED DAWG with a view to it having brand significance, with a view to it having an impact on consumers and to influence the economic behaviour of consumers of Monster energy drinks;
• Consumers of the mark RED DAWG would be reminded of RED BULL when seeing the mark RED DAWG;
• As a consequence, the mark RED DAWG would appear instantly familiar, thereby making it easier for Monster to establish the mark and to sell its energy drinks, without incurring the marketing costs that would otherwise and usually have been required;
• Thus, RED DAWG would be given a free-ride and would gain an unfair commercial advantage, in being able to get a boost to their business without incurring the marketing costs that would otherwise have been required.

Lessons to be learned

The case highlights that brand owners can prevent other traders from free-riding off the reputations of their brands. For example, supermarket own branded ‘lookalike’ products often (deliberately) ‘mimic’ the packaging, get-up and overall appearance of earlier, well-established branded products, but adopt different names to the branded products. This is sometimes described as “unnecessary similarity”. In the right case, it is also unlawful and can be prevented via a claim for registered trade mark infringement.

For more information on this article, please contact Carl Steele.