Historically, Red Bull has vehemently protected and enforced its intellectual property rights against third parties which use a silver and blue colour combination on energy drinks. However, a recent judgment may mean that Red Bull will lose some of its colour combination trade mark registrations.
On 30 November, in reference to Red Bull’s two European Union Trade Marks (EUTMs) that sought to achieve protection for the blue and silver combination colour trade marks, the EU General Court ruled that “a trade mark consisting of the mere juxtaposition of two colours, without a systematic arrangement, is not sufficiently precise and uniform to be valid”.
The first application EU 02534774, was filed in January 2002 for ‘Energy Drinks’ in class 32. The description filed was “Protection is claimed for the colours blue (RAL 5002) and silver (RAL 9006). The ratio of the colours is approximately 50% - 50%”.
The second application EU 09417668, was filed in October 2010 for “Energy Drinks” in class 32. This time the description read “The two colours will be applied in equal proportion and juxtaposed to each other” and the colours claimed were “blue (Pantone 2747C), silver (Pantone 877C)”.
Both marks proceeded to registration on the basis of acquired distinctiveness. This means that Red Bull could show that the combination of the colours had been used by itself and this use had acquired a secondary meaning in the eyes of the consumer as being an indicator of origin for Red Bull energy drinks.
In 2007, XL Energy Marketing Sp.Z.o.o. and Boost Drinks Limited (represented by UDL) both filed invalidity actions on the grounds that the marks were devoid of any distinctive character and the wording of the descriptions did not conform to ECJ Case Law i.e. Sieckmann, which requires “clear and precise representations”. These actions were settled and the cases closed.
However in August 2011, Optimum Mark filed an application for the revocation of the earlier mark on the basis that it had not been put to genuine use for a continuous period of five years. They then filed an invalidity action against both of the Red Bull marks on the basis that they were registered in breach of Article Seven CTMR and had been filed in bad faith.
In October 2013 the EUIPO’s Cancellation Division found that the marks were invalid as they were devoid of distinctive character. Red Bull appealed this decision, but it was upheld by the First Board of Appeal in December 2014. Red Bull appealed again and the General Court heard the case in March 2017.
The Decision found that the Board of Appeal was correct to find that the graphical representation of the marks “allowed several different combinations of the two colours” and that the respective descriptions “did not provide additional precision with regards to the systematic arrangement associating the colours in a pre-determined and uniform way”.
Red Bull can seek leave to appeal the decision one more time, by taking it to the Court of Justice of the European Union.
With the invalidation of the Red Bull colour combination marks highly likely, it will mean that Red Bull cannot rely on these marks in trade mark infringement cases. However it is undoubtedly the case that in the UK at least, Red Bull will rely on the tort law of passing off to continue to vehemently defend their trade dress against third parties who also choose to use blue and silver colour combinations for energy drinks.
Red Bull has many other colour and logo trade mark registrations, which are less ambiguous, represent how they actually appear on Red Bull products and can be relied upon in trade mark infringement cases.
As such, this decision in the long run is unlikely to affect Red Bull’s ability to enforce their rights in the blue and silver colour combination for energy drinks.