Trademark reputation – The Red Bull Case
Trademark reputation is one of the most important elements of trademark law because so many cases are essentially about proving it. Although judgment was handed down as long ago as the 06 February 2014, the preliminary ruling of the court of Justice of the European Communities relevant to trademark reputation, following a request from the Hoge Raad der Nederlanden (Netherlands), in the case of Leidseplein Beheer BV, v Red Bull GmbH  EUECJ C-65/12, is worth reviewing. Particularly in light of the relevance of our article on trademark surveys.
In brief the case involved The Bull Dog Amsterdam and Red Bull. The Bull Dog is a well known hotel, restaurant and bar in the centre of Amsterdam. De Vries was the owner of the word and figurative mark registered in class 32 (non alcoholic drinks) “The Bulldog” registered 14 July 1983, the word mark “The Bulldog” registered in 1999 and a word and figurative mark “The Bulldog Energy Drink” registered in 2000. Red Bull was the owner in the Benelux countries of the word and figurative mark “Red Bull Krateng-Daeng” registered 11 July 1983 for goods in class 32 (non alcoholic drinks).
The question referred to the European Court was with respect to the interpretation to be given to “due cause” in Art 5(2) of Directive 2008/95/EC.
The following points are worthy of note:
First, the Court concluded that it was in line with the system for the protection of marks as adopted on the basis of 89/104/EEC (Repealed by EU Directive 2008/95/EC), that the interests of a 3rd party in using, in the course of trade, a sign similar to a mark with a reputation must be considered in the context of art5(2) of the directive, in the light of the proximity for the user of that sign to claim “due cause”.
Second, that the third party that takes unfair advantage of trademark reputation can claim “due cause” for subjective interests. Reference was made to Interflora and Interflora British Unit  ECR I‑8625.
Third, that the concept of “due cause” is meant to strike a balance between the interests in question. A strong senior user of a family of marks with a reputation is obliged to tolerate the use of the identical or similar sign if “due cause” can be established by a more junior but strong user
of similar or the same mark.
Fourth, it was common ground that Mr De Vries had used the sign “The Bulldog”, before the mark “Red Bull” was registered and had a reputation.
Fifth, the default position is that the more junior but strong user is using the mark in bad faith unless it can show “due cause”. Reference was made to C‑487/07 L’Oréal and Others  ECR I‑5185.
Sixth, in order to constitute due cause 2 factors must be made out:
(i) How the junior mark has been accepted and what reputation it has with the relevant public?
(ii) What is the intention of the owner of the junior mark?
Seventh, in order to determine whether the junior mark has been used in good faith it is necessary to:
(i) Take account of the degree of proximity between the goods and services for which that sign has been used and the product for which that senior mark was registered;
(ii) Have regard for when that sign was first used for a product identical to that for which that senior mark was registered; and
(iii) When the senior mark acquired its reputation.
The Court concluded that the owner of a senior mark may be obliged to tolerate the use by a 3rd party if by applying the following test the national court found that the use was in good faith, as follows:
* How that sign has been accepted by, and what its reputation is with the relevant public;
* The degree of proximity between the goods and services for which that sign was originally used and the product for which the mark with a reputation was registered; and
* The economic and commercial significance of the use for that product of the sign which is similar to that mark
The right trade mark survey evidence is important in a case like this one.