The recent case of Monster Energy Company v Red Bull GmbH illustrates why any business seeking to safeguard its brand must have comprehensive trade mark protection in place at the earliest opportunity.
This case also serves as a valuable reminder that a trade mark holder can oppose a trade mark application even if no likelihood of confusion exists, using the free riding ground for opposition.
Monster Energy (Monster) and Red Bull are both well-known energy drink manufacturers, each with a strong market share and brand value in the UK and internationally.
Monster applied to register a UK trade mark ‘RED DAWG’. This application was ‘published’, which constitutes a period of 2 months where holders of existing similar trade marks may file opposition to its registration. Red Bull has numerous UK trade marks including the word mark ‘RED BULL’ and subsequently filed its opposition to the ‘RED DAWG’ application.
On behalf of the UK Intellectual Property Office, the first instance hearing officer upheld Red Bull’s opposition, preventing the trade mark from being registered. Monster consequently appealed to the High Court.
What is ‘free riding’?
Free riding refers to one of the grounds for refusing a UK trade mark application under section 5(3) Trade Marks Act 1994 (TMA).
It applies to situations where the new trade mark would take unfair advantage of the existing trade mark’s reputation, or otherwise be detrimental to it. This doesn’t require actual consumer confusion regarding the two marks and it is enough for there to be a potential risk of consumer behaviour being indirectly influenced, to the benefit of the new trade mark applicant, in a way which is unfair or detrimental to the existing trade mark holder.
The free riding ground was crucial in this case and is often a key protection for prominent UK trade mark holders. Red Bull raised another ground for opposition in the initial hearing which was rejected with only the free riding ground upheld.
The case and its relevance
The court upheld the original decision, refusing Monster’s appeal. This decision underlines just how dangerous the free riding ground for appeal can be to an ill prepared new trade mark applicant’s prospects of successful registration.
The court confirmed:
- There is no need for evidence if unfair advantage can be logically deduced from the facts.
- The applicant’s intentions are not relevant with no need to show an intention to take advantage of the existing brand.
- The likelihood of public confusion is a separate point. Even if the public would not think the new trade mark’s goods or services relate to the existing trade mark’s goods or services, the opposition can succeed as long as some benefit to the new trade mark applicant through an indirect connotation with the existing trade mark holder’s brand can be shown or deduced.
It is critical for any new trade mark application to consider similar existing trade marks and whether holders could successfully use free riding opposition to block the application.
3 key takeaways: getting comprehensive UK trade mark protection
- Broad Protection: make sure your trade mark coverage is comprehensive – word marks, logos, 3-D marks and even sounds can all be applied for.
- Apply early: a successful application applies from the date of application. Protection can be renewed every 10 years indefinitely and the earlier you register the less likely other similar marks will be registered.
- Carry out a Trade Mark Search: carry out a Trade Mark Search to identify similar marks to your proposed mark to assess your likelihood of successful registration and any risk.
At Hamlins, we can assist you by explaining how your entire brand portfolio can be protected by trade marks; reporting on existing similar trade marks; and showing you how best to apply for the UK registration of your trade marks.
We can also assist with EU and international trade mark applications to adopt an appropriate global perspective for your brand protection strategy.
If you would like a conversation to find out how we might be able to help you, please contact Matthew Pryke.