Red Bull knocked back

5th Mar 2019

The court noted marks were of a different species, reports Jade MacIntyre. [2018] EWHC (Ch), Red Bull GmbH v Big Horn UK Ltd & Ors, High Court, 12th November 2018.

[2018] EWHC (Ch), Red Bull GmbH v Big Horn UK Ltd & Ors, High Court, 12th November 2018.

Key points

• The Claimant’s applications seeking judgment in default and to strike out, and/or summary judgment in respect of a number of defences to a trade mark infringement claim, were dismissed 
• The Court was not satisfied that the Defendants had no real prospect of defending the claim
• The procedural deficiencies in the filing and serving of the defences were insufficient for the purposes of striking out

The Claimant in this case manufactured and distributed the well-known energy drink Red Bull. It was the proprietor of several registered trade marks in class 32.

The first Defendant (D1) imported into and sold in the UK energy drinks bearing the name Big Horn. 

The second Defendant (D2) distributed D1’s Products in Bulgaria. The third Defendant (D3), a Bulgarian citizen, was the director and sole shareholder of D1. He was also the owner of the domain name bighornenergy.co.uk, on which D1’s Products were advertised.

On 23rd August 2016, D2 applied to EUIPO for registration of a mark featuring the name Big Horn in class 32 (D2’s Mark). This application was opposed by Red Bull on 7th November 2016 under Articles 8(1)(b) and 8(5) of Regulation (EU) 2017/1001 (EUTMR).

On 6th February 2018, Red Bull issued proceedings under the Shorter Trials Scheme against the Defendants for infringement of Red Bull’s Mark contrary to Articles 9(2)(b) and 9(2)(c) EUTMR. No claim was made for passing off. 

On 23th February 2018, D3 filed acknowledgments of service of D1 and D3, stating an intention to defend the claim. On 13th March 2018, it filed Form F9D. This incorporated a document dated 7th March 2018 entitled “Defence” (the D1/D3 Defence).

First application 

Relying on Almond v Medgolf Properties Ltd [2015] EWHC 3280 (Comm), on 8th June 2018, Red Bull applied for judgment in default against D2 on the grounds that D2 had failed to file an acknowledgment of service.

On 6th August 2018, without a hearing, the Court granted a retrospective order for service by alternative means, which provided that the steps already taken by Red Bull to bring the claim form to D2’s attention were deemed good service and that the deemed period for D2 to file an acknowledgment of service or defence had expired on 7th May 2018. Master Clark ruled that this order had been made on the basis that it would not prejudice any rights accrued before the order was made, namely D2’s opportunity to defend itself. 

Further, on 2nd March 2018, unknown to Red Bull, D2 had changed its registered office address in Bulgaria. The claim form and particulars of claim were delivered to D2’s old address on 16th April 2018. The fact that D2’s old address was its address as at the date of issue of the claim form (6th February 2018) did not validate it as an address for service when, by the date of service, it was no longer D2’s address. Therefore, as at the date when the application was made (8th June 2018), D2 had not in fact been served.

For these reasons, Master Clark dismissed the application for default judgment.

Second application 

Master Clark next considered Red Bull’s application dated 10th August 2018 regarding whether a number of procedural deficiencies on the part of the Defendants in the filing and serving of their defences to the trade mark infringement claim were sufficient for the purposes of striking out and/or summary judgment of the D1/D3 Defence. 

This application was based on the following grounds under CPR 24.2 and CPR 3.4(2): (i) the Defendants had failed to comply with rules and practice directions; (ii) the Defendants’ actions were likely to obstruct the just disposal of the proceedings; and (iii) there were no reasonable grounds for defending the claim.

In relation to the first two grounds, Master Clark rejected Red Bull’s submissions. Red Bull’s criticisms of the Defendants’ actions did not, in Master Clark’s judgment, constitute serious or significant breaches so as to justify striking out. Master Clark therefore dismissed Red Bull’s application, finding that it would be wholly disproportionate to strike out the D1/D3 Defence for the procedural breaches of the kind submitted by Red Bull. 

As to the similarities between D2’s Mark and Red Bull’s Mark (and the absence of a likelihood of confusion or link), Red Bull’s counsel submitted that there were clear visual and conceptual similarities between Red Bull’s Mark and D2’s Mark. The average consumer for such products is the general public, who exercise a relatively low level of attention when purchasing such items, which seek to attract customers using visual cues. 

The Court rejected these submissions and agreed with the Defendants’ arguments that the graphic elements of Red Bull’s Mark are dissimilar to those of the sign on D1’s Products, and there was therefore no likelihood of confusion or link between the marks. 

The Court noted the dissimilarities between D2’s Mark – a mountainous landscape against the background of a sun/yellow circle, with two large-horned ibex starting to jump – and Red Bull’s Mark, in which two small-horned bulls move towards each other in black and white. The Court also agreed with the decision of EUIPO’s Opposition Division on 25th May 2018 rejecting Red Bull’s opposition to the registration of D2’s Mark, which stated that “the fact that two apparently different animals move towards each other is not sufficient for a finding of similarity”. 

Master Clark therefore rejected Red Bull’s application, as the Court was: (i) not satisfied that the Defendants had no real prospect of defending the claim (for the purposes of CPR 24.2(a)(ii)); and (ii) satisfied that there was no likelihood of confusion (in respect of the claim under Article 9(2)(b)) and no link (in respect of the claim under Article 9(2)(c)).

Master Clark noted the regrettable extent to which the judgment had been lengthened by the determination of procedural points of little or no merit advanced by the Claimant in support of its strike-out application.

Jade MacIntyre is a Chartered Trade Mark Attorney at Allen & Overy LLP 

Jade was assisted by Mark Pugh, a Trainee Solicitor in the IP litigation group at Allen & Overy LLP.

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