Red Bull GmbH and (1) Sun Mark Limited (2) Sea, Air and Land Forwarding Limited  EWHC 1929 (Ch)
On 17 July 2012 The Honourable Mr Justice Arnold handed down his decision in the case between the Austrian energy drinks giant Red Bull GmbH and UK based independent drinks company, Sun Mark Limited ("Sun Mark") (and associated shipping firm Sea, Air and Land Forwarding ("SALF")).
Red Bull's intention to use the mark BULLIT was found to be sufficient so as to deny Sun Mark and SALF a defence to trade mark infringement of the registered marks BULLIT i.e. on the basis that Red Bull acted in bad faith in applying to register the BULLIT marks. The defendants failed to dodge a second bullet and were also found to infringe RED BULL in respect of the use of NO BULL IN THIS CAN.
After being inspired by an energy drink whilst on a trip to Thailand in 1984, Dietrich Mateschitz (founder and Managing Director of Red Bull) brought to Europe a drink which would become (in 2011) the 4th most valuable brand worldwide in the soft drink sector and have sales in 157 countries totalling 340.7 billion cans (in 2010). Sun Mark is a UK based drinks company which imports, exports and distributes both its own and third party FMCG products. SALF is its associated shipping partner.
On 12 April 1999, Red Bull demonstrated an interest in protecting the mark BULLIT by filing an Austrian trade mark application in Classes 32, 33 and 34. That mark was then used as a basis for an International Registration and the UK subsequently designated. Various prior rights in the UK meant that the specification was limited to "beer" but crucially this application revealed the earlier UK right of W&S Holding BV for BULLIT (with a filing date of 31 May 1996) ("the 1996 BULLIT registration") which would come to have key strategic importance in the battle of the parties over the next 13 years.
On 8 September 2000, SALF filed a UK Trade Mark application for the mark BULLET in Class 32 for "health fruit drink; health fruit juice drink, still and carbonated" ("the SALF registration"). The 1996 BULLIT registration of W&S Holding BV was not cited against the application at the time (though should have been) but was later used (by Red Bull) to invalidate the registration.
From there began a protracted standoff around the validity and priority of the marks BULLIT and BULLET in the UK for Class 32 goods, which included the aborted approach by Red Bull to buy the SALF registration (no price could be agreed, the opening suggestions of £1,500 vs £100,000 being too far apart to pursue). However, once it successfully acquired the 1996 BULLIT registration in July 2005 - Red Bull had the upper hand. As a result of that acquisition, the previously (provisionally) refused designations of two later filed BULLIT International Registrations were registered. Red Bull could then afford to be bullish, challenging both the 2000 registration in the UK and a published application at OHIM for the mark BULLET filed on 7 November 2005. In March 2007 Red Bull contacted the defendants alleging infringement of its BULLIT rights in the UK. Proceedings were not actually issued until May 2010 by which time Red Bull had invalidated the SALF registration by virtue of the 1996 BULLIT registration, thereby successfully removing SALF's initial Section 11(1) defence .
Decision and comment
The findings of infringement of the BULLIT registrations and RED BULL (for use of NO BULL IN THIS CAN) given the enormous reputation, marketing spend and presence of the mark RED BULL and / or BULL alone for energy drinks, perhaps even canned drinks, seem not too surprising.
The decision that Red Bull did not act in bad faith (so as to provide a defence to the above infringements) by applying for protection in the UK for the two International Registrations for BULLIT has given some guidance on the standard of intention required to satisfy the test at least under the 1994 UK Act (Section 32(3)) – as well as providing a useful recap ofbad faith and intention to use principles.
Essentially, Arnold J. found that the "possible or contingent intention to use [BULLIT] at some future date may suffice" (depending on the circumstances of the case) and in this case did. Red Bull's original applications to register BULLIT in the UK were part of a strategy to secure rights in a mark which do not need to predate the launch of a product (and typically do not). The "tentative" plans of Red Bull to use BULLIT on a drink (against the backdrop of occasional flurries of BULL-themed applications) were sufficient under the circumstances, which included an unquestionable interest in energy drinks and a clear interest in the UK market generally.
So no escape for Sun Mark and SALF to the infringement; but let us see, will Sun Mark and SALF have the energy to bring an appeal, or be prepared to bite the bullet?
This article was previously published in World Trade Mark Review Daily