In the recent trademark infringement case between Red Bull v Big Horn UK Ltd and others; His Honour Judge Kelyn Bacon QC held that Big Horn had infringed several EU trademark registrations owned by Red Bull.
This was because Big Horn had advertised and sold energy drinks and bottled water under various Big Horn signs in the UK and elsewhere in the EU.
In reaching his decision, the Judge also held that the sole director of Big Horn was also liable for trademark infringement.
The background of the case was as follows:
- Red Bull is the owner of various EU trademark registrations in relation to energy drinks, bottled water and other non-alcoholic drinks. Big Horn advertised and sold energy drinks and bottled water under various Big Horn signs in the UK and elsewhere in the EU. Details of Red Bull’s registered trademarks and the signs used by Big Horn are depicted in the table below:
- In August 2016, Big Horn had applied for an EU trademark in relation to the mark above which bears the double ram and golden sun together with the wording Big Horn. Big Horn wanted to use this trademark to advertise and sell energy drinks and various different types of water. Big Horn’s trademark application was successfully opposed by Red Bull.
- Notwithstanding the fact that Red Bull opposed Big Horn’s trademark application, Big Horn energy drinks started to appear in the UK and Bulgaria. The Big Horn energy drinks were sold in cans which were an identical shape and size to Red Bull’s cans.
Issues Dealt with at Trial
When the matter came to trial, the issues the Court had to deal with were as follows:
- Whether the signs used by Big Horn were similar to Red Bull’s registered trademarks and were used on similar goods and which gave rise to a likelihood of confusion on the part of the public.
- Whether Big Horn’s signs were similar to Red Bull’s trademarks and thereby led to unfair advantage being taken of the distinctive character or reputation of Red Bull’s trademarks.
- Whether Big Horn’s sole director, Mr Enchev, was personally liable for trademark infringement as a joint tortfeasor.
The Court’s Decision
The Court made the following decisions:
- That Big Horn’s signs were visually and conceptually similar to Red Bull’s trademarks.
- That Big Horn’s signs would be likely to cause the average consumer to link Big Horn’s signs with Red Bull’s trademarks and that Big Horn’s signs took unfair advantage of the distinctive character and global reputation of Red Bull’s trademarks.
- That despite the similarity between Big Horn’s signs and Red Bull’s trademarks, the average consumer would perceive Big Horn’s products as a cheaper or alternative version of Red Bull’s products because an average consumer is likely to spot the differences between Big Horn’s products and Red Bull’s products.
- That Mr Enchev was also personally liable for trademark infringement. This was because Mr Enchev was the sole director and controlling mind of Big Horn. He also entirely controlled Big Horn’s actions in regards to importing, marketing and advertising the infringing products.
Whilst the result of this case is rather uncontroversial in terms of how the law relating to trademarks was applied, this case does serve as a timely reminder that where a director acts as the controlling mind of a company and is directly responsible for the importation, marketing and advertisement of products, there may be grounds to pursue a director personally for trademark infringement.
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