RED BULL recognized as famous mark

The Serbian Intellectual Property Office has invalidated the trademark BULLDOG ENERGY DRINK for goods and services in Classes 33 and 43 of the Nice Classification, recognizing that the RED BULL mark is famous in Serbia (Case 4880/08, IR 859936, December 26 2008, not yet final).
Moškotevc Roman and Pavšic Hermina applied for the registration of the trademark BULLDOG ENERGY DRINK (Registration 859936) for:
  • non-alcoholic beverages in Class 32;
  • alcoholic beverages in Class 33; and
  • "services for providing food and drinks; bar services, cafeterias, services for coffee shops, providing of food and drink (meals)" in Class 43.
Red Bull GmbH filed a motion of observation suggesting that the IP Office should refuse to register the trademark BULLDOG ENERGY DRINK in Classes 32, 33 and 43 (the Serbian legislation does not provide for opposition proceedings). The office decided to reject the application only with regard to goods in Class 32, and the mark was allowed to proceed to registration for goods and services in Classes 33 and 43.
Red Bull filed an action for the invalidation of the mark, arguing that the BULLDOG ENERGY DRINK mark:
  • incorporates its earlier trademark BULL (Registration 714749), which is registered for goods and services in Classes 33 and 43; and
  • is confusingly similar to a number of its earlier marks featuring the word 'bull' and/or trapezoid device (Registrations  765696 and 857309 in Class 33; Registrations 706170, 789927, 790482 and 817132 in Class 32).
Red Bull also argued that:
  • its RED BULL mark is famous in Serbia; and
  • use of the BULLDOG ENERGY DRINK mark by the applicants would take unfair advantage of the reputation of the RED BULL mark, and would be detrimental to its distinctive character and reputation.
In support of its argument that the RED BULL mark is famous, Red Bull submitted evidence relating to the use and advertising of the RED BULL mark around the world (including Serbia). Red Bull also submitted several market surveys, including a 2005 survey conducted in Serbia which showed that 89% of the general population recognized the mark spontaneously, while 99% recognized it when prompted.
The office agreed that the RED BULL mark has a high reputation in Serbia. Therefore, the office decided not to compare the goods in question, but considered only whether the marks were similar.
The office held that the marks were similar from a conceptual, visual and phonetic point of view. In particular, the office found that BULLDOG ENERGY DRINK imitated Red Bull’s mark, as it consisted of:
  • a blue and yellow checkered device, with the word 'bull' written in red letters on the top-left blue square, and the word 'dog' written in blue letters on the top-right yellow square; and
  • the image of a red bulldog’s head, which gave an impression of power and energy similar to that conveyed by the image of the red bull in the RED BULL mark.
In light of the above, the office concluded that use of the BULLDOG ENERGY DRINK mark was likely to take unfair advantage of the reputation of Red Bull’s mark.
It is the first time that the office has recognized that famous trademarks may be protected against the use of similar marks for dissimilar goods.
The office has had difficulties notifying the decision to the applicants (who reside abroad), which is why it is not yet final and enforceable. The applicants may appeal the decision before the Serbian courts within 30 days of being notified.
Gordana Pavlovic, Cabinet Pavlovic, Brussels

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