Date: 10 May 2019
In Red Bull GmbH v Big Horn UK Ltd & Ors.  EWHC 2794 (Ch), Red Bull unsuccessfully sought strike out, summary judgment and judgment in default in relation to Big Horn’s use of an animal on its Big Horn range of “energy drinks”. The case demonstrates the high thresholds that must be met in order to obtain orders for default judgment, strike out or summary judgments, as well as the dangers of advancing arguments that involve the determination of “procedural points of little or no merit”.
Red Bull claimed that the sign used by Big Horn on its energy drinks infringed Red Bull’s trade mark of two bulls in front of a yellow circle, or sun. The marks at issue are shown below:
The second defendant, the Bulgarian company Voltino Eood (Voltino), distributes Big Horn’s products in Bulgaria (and in the rest of the EU, according to Red Bull). It was Voltino that owned the EUTM for the BIG HORN trade mark shown above.
On 25 May 2018, the EUIPO’s Opposition Division rejected Red Bull’s opposition to the registration of the BIG HORN mark. Considering the two animals in the BIG HORN mark, the Opposition Division said “Obviously, these are mountain ibexes living in the mountains, their typical habitat” and “The fact that two apparently different animals move towards each other is not sufficient for a finding of similarity. Therefore, the signs are visually dissimilar.”
The Opposition Division also found the signs were conceptually dissimilar. The RED BULL mark was “a sign in which two bulls (fast) move towards each other” whereas the BIG HORN mark was “a mountainous landscape against the background of a sun/yellow circle, with two ibexes starting to jump”. The meanings of the signs therefore went in different directions. Given that the signs were dissimilar, one of the necessary conditions of Article 8(1)(b) EUTMR was not fulfilled and so Red Bull’s opposition based on likelihood of confusion was rejected.
As similarity between the signs was also a requirement for opposition to be successful under Article 8(5) EUTMR, Red Bull’s opposition under this head was also rejected. However, this was not the end of the matter…
Bullish claims and applications
Red Bull had issued a claim under the UK’s Shorter Trial Scheme, alleging that the import, sale and advertising of the Big Horn energy drink infringed its rights under Articles 9(2)(b) (similar marks, identical goods) and 9(2)(c) (similar marks, use taking unfair advantage without due cause of the claimant’s marks) of EUTMR. Photographs of energy drinks bearing the name “Big Horn” were included in the particulars of claim:
Big Horn and its director - the third defendant, Lyubomir Enchev (Enchev) - were duly served. However, unbeknown to Red Bull, Voltino had changed their address; the claim form and particulars of claim had been delivered to Voltino’s old address, which was not valid service.
Defences were filed by Big Horn and Enchev in March 2018. In apparent response to Red Bull’s criticism of their defence, Big Horn and Enchev filed and served further (in substance, identical) defences in April 2018, bearing the earlier date, but with re-signed statements of truth. On 19 July 2018, the law firm Briffa that briefly acted for the defendants filed and emailed (but did not serve) what the Court referred to as the “Briffa Defence”, which included a denial that Voltino had been validly served. This document contained a statement of truth appropriate for a witness statement. Then, on 30 July 2018, Briffa emailed (but did not file or serve) a revised defence, which was identical to the “Briffa Defence” but now contained an appropriate statement of truth.
The day after Briffa ceased acting for the defendants, Red Bull applied for an order providing that sending the claim form and particulars of claim by recorded post to Voltino’s old address should be deemed good and sufficient service. Red Bull submitted that this order declared that it had accomplished good service, but this was not true - it was merely an order in the usual terms of an order providing for (retrospective) service by alternative means pursuant to CPR 6.15(2).
Red Bull applied to the High Court seeking: (i) to strike out and/or summary judgment in respect of the defendants’ relevant defences and (ii) judgment in default against Voltino (which had not filed an acknowledgment of service).
Red Bull’s arguments lacked wings
Dismissing Red Bull’s application for a default judgment, the Court found that an order providing for (retrospective) service by alternative means could not deprive Voltino of its right to defend the claim by reason of having filed a defence before an order had been made obliging it to do so.
Red Bull’s application for strike out or summary judgment also failed to fly.
The Court considered various alleged instances of failure to comply with rules and practice directions and found that, while certain breaches had occurred, these were not serious or significant. Although the Court accepted that Voltino’s failure to serve the Briffa defence and the revised version was significant, it was not a breach of the rules which could, in the particular circumstances, justify striking out the defence.
Having dealt with Red Bull’s unsuccessful procedural points, the Court considered the defendants’ deficient pleadings and decided they had some relevant defences.
As regards likelihood of confusion under Article 9(2)(b) EUTMR, Red Bull argued there were “clear visual and conceptual similarities” between Red Bull’s marks and the signs used on Big Horn’s cans and in advertising - the Big Horn logo of a twin or double ram against the yellow circle or sun as against the Red Bull mark with the circle background, as well as the blue and silver background used by both brands. As regards Article 9(2)(c), where a likelihood of confusion was not required, Red Bull claimed that a link would be made from such similarities, which all combined to demonstrate that there was “clear intent to take unfair advantage of the claimant’s marks”.
However, Voltino argued that it had not copied Red Bull: it was merely representing the creatures “in their natural environment and the scene is derived from their natural behaviour. Since the bulls of the former marks are domestic and not wild animals and are not presented in their natural environment as they do not fight with each other, not to mention they do not usually face a mirror there are no grounds to consider that the common user would establish a link between both signs”.
The Court took the view that the defendants had three possible defences: (i) Red Bull’s marks were dissimilar to the signs on the defendants’ products; (ii) there was no likelihood of confusion in respect of the claim under Article 9(2)(b); and (iii) there was no “link” between the marks in relation to the claim under Article 9(2)(c). As the Court found that the defendants had a reasonable prospect of defending some or Red Bull’s entire claim, this was fatal for Red Bull’s application:
Big Horn’s prospect of success was more than fanciful.
This case illustrates the need to carefully consider the basis for applications for default judgment, summary judgment and strike out; as the Court said, it was regrettable that “this judgment has been lengthened by the determination of the procedural points of little or no merit advanced by [Red Bull] in support of its strike out application.”
It also shows the difficulties that can arise in the absence of competent legal representation. The defendants were represented by a firm of solicitors for a short period of about two months. Only the first and third defendant appeared at the hearing; the third defendant had a very limited command of English and represented the first defendant, assisted by a person acting as interpreter and by a McKenzie friend. The effect was that the first and third defendant “were significantly disadvantaged in opposing the applications”, and so the Court had to “ensure the parties are on an equal footing, while also ensuring compliance with rules, practice directions and orders”. The judgment clears the arena for the two competitors to lock horns at a future trial.