Red Bull Gmbh v Sun Mark Ltd and Another
| Jurisdiction | England & Wales |
| Judge | Mr Justice Arnold |
| Judgment Date | 17 July 2012 |
| Neutral Citation | [2012] EWHC 1929 (Ch) |
| Court | Chancery Division |
| Docket Number | Case No: HC10C01732 |
| Date | 17 July 2012 |
[2012] EWHC 1929 (Ch)
IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION
Rolls Building
Fetter Lane, London, EC4A 1NL
The Hon Mr Justice Arnold
Case No: HC10C01732
Jacqueline Reid (instructed by Shoosmiths) for the Claimant
Anna Edwards-Stuart (instructed by Ipulse) for the Defendants
Hearing dates: 21–22, 25–26 June 2012
| Introduction | 1–5 |
| The witnesses | 6–11 |
| Red Bull's witnesses | 6–7 |
| Jennifer Powers | 6 |
| Aaron Newland | 7 |
| The Defendants' witnesses | 8–11 |
| Dr Raminder Ranger | 8 |
| Mrs Renu Ranger | 9 |
| Sanjay Raphael | 10 |
| Spencer Burgess | 11 |
| Factual background | 12–70 |
| Red Bull | 12–17 |
| W & S Holding's BULLIT registration and product | 18–19 |
| The CTM | 20 |
| The Bull Series | 21 |
| Red Bull's 1999 BULLIT applications | 22–23 |
| Red Bull's other 1999 applications | 24 |
| SALF's BULLET registration | 25–26 |
| The Mix Series | 27 |
| Dr Ranger's letter dated 15 August 2002 | 28–29 |
| Red Bull's 2002 BULLIT applications | 30–31 |
| Red Bull's other 2002 applications | 32 |
| Red Bull's application to revoke W & S Holding's registration | 33 |
| Red Bull's 2003 BULLIT applications | 34–35 |
| Correspondence between Red Bull and SALF in 2004–2005 | 36–41 |
| Red Bull's purchase of W & S Holding's rights | 42–43 |
| Red Bull's 2005 BULLIT applications | 44 |
| Red Bull's plans for the Mix Series in June 2005 | 45 |
| Red Bull's BULLIT product | 46–48 |
| SALF's CTM application | 49 |
| Correspondence between Red Bull and SALF in 2006 | 50–53 |
| The Defendants' sales of their BULLET product | 54 |
| Red Bull's opposition to SALF's CTM application | 55 |
| SALF's failure to oppose IR 548 | 56 |
| SALF's application to revoke UKTM 481 | 57 |
| Red Bull's applications to revoke and invalidate UKTM 956 | 58 |
| Correspondence between Red Bull and SALF in 2007 | 59–61 |
| Red Bull's 2008 applications | 62 |
| The Defendants' launch of ROBUST | 63 |
| The Defendants' use of the strapline NO BULL IN THIS CAN | 64 |
| The Defendants' further application to revoke UKTM 481 | 65 |
| Red Bull's use of BULLIT in the UK | 66 |
| Further letters before action | 67 |
| Commencement of these proceedings | 68 |
| Sun Mark's applications to revoke IR 389 and IR 548 | 69–70 |
| Red Bull's claim for infringement concerning BULLET | 71–86 |
| The law | 71–78 |
| Assessment | 79–86 |
| The trade mark | 79 |
| The sign | 80–81 |
| The average consumer | 82 |
| Distinctiveness of the trade mark | 83 |
| Comparison between the mark and the sign | 84 |
| Comparison between the goods | 85 |
| Conclusion | 86 |
| Red Bull's claim for infringement concerning NO BULL IN THIS CAN | 87–112 |
| The law | 87–98 |
| Assessment | 99–112 |
| Does the trade mark have a reputation? | 99 |
| What is the sign? | 100–102 |
| Is there a link? | 103 |
| Does the use take unfair advantage of the trade mark? | 104–109 |
| Is the use detrimental to the repute of the trade mark? | 110 |
| Is the use without due cause? | 111 |
| Conclusion | 112 |
| The Defendants' counterclaim | 113–192 |
| The legal context | 113–123 |
| The Madrid Agreement and the Madrid Protocol | 113–114 |
| Common Regulations | 115–116 |
| TRIPS | 117 |
| The Directive | 118–120 |
| 121 | |
| The 1996 Order | 122 |
| The 2008 Order | 123 |
| Declaration of intent to use: UK trade marks | 124–125 |
| Declaration of intent to use: international trade marks (UK) | 126–128 |
| Declaration of intent to use: Community trade marks | 129 |
| Bad faith: general principles | 130–138 |
| Lack of intention to use as a ground of bad faith: earlier case law | 139–157 |
| Is there a requirement of intention to use under the Regulation? | 158 |
| Is the UK's requirement for a declaration of intention to use compatible with the Directive? If so, can a false declaration amount to bad faith? | 159–160 |
| Is a possible or conditional future intention to use enough? | 161–163 |
| The present case | 164–193 |
| Did Red Bull declare that it intended to use the mark in the UK? | 166–174 |
| Did Red Bull in fact intend to use BULLIT in the UK at the relevant dates? | 175–190 |
| Did Red Bull act in bad faith? | 191–193 |
| A reference to the CJEU? | 194 |
| An issue deferred | 195 |
| Conclusions | 196 |
Introduction
The Claimant, Red Bull GmbH ("Red Bull"), is an Austrian company which markets the well-known RED BULL energy drink. Since 2002 it has distributed RED BULL in the United Kingdom through Red Bull Company Ltd ("Red Bull UK"), an English company in which Red Bull has a 25% shareholding.
The Defendants carry on business in the import, export and distribution of fast moving consumer products. These include both third-party branded products and their own branded products. The First Defendant, Sun Mark Ltd (formerly known as Sun Oil Ltd, "Sun Mark"), is responsible for the distribution and sale of the products and the Second Defendant, Sea Air and Land Forwarding Ltd ("SALF"), is responsible for shipping them.
Sun Mark has been one of the Red Bull UK's trade customers since June 2002. Despite this commercial relationship, there is a history of disputes between Red Bull and the Defendants over trade mark issues. (Some of these disputes are related below, but not all of them. For another example, see Sun Mark Ltd's Trade Mark Application (O—068–10).) In these proceedings Red Bull claims that the Defendants have infringed three of Red Bull's registered trade marks. The Defendants deny infringement and counterclaim for declarations that two of the registrations are invalid. It is admitted that the Defendants are jointly liable for any infringements there may have been, however.
The infringement claims are two-fold. First, Red Bull claims that the Defendants have infringed International Trade Marks (UK) Nos. 790389 and 824548 ("IR 389" and "IR 548" respectively) for the word BULLIT by use of the sign BULLET in relation to an energy drink. Secondly, Red Bull claims that the Defendants have infringed Community Trade Mark No. 698720 ("the CTM") for the words RED BULL by use of the advertising slogan or strapline NO BULL IN THIS CAN.
The counterclaim relates to the two BULLIT marks. The Defendants contend that these are invalid on the ground that Red Bull applied for these registrations in bad faith since it had no genuine intention to use the trade mark in the United Kingdom.
The witnesses
Red Bull's witnesses
Jennifer Powers. Jennifer Powers has been Red Bull's IP Counsel since 6 April 1999. I found Ms Powers to be a knowledgeable and reliable witness so far as Red Bull's trade mark portfolio was concerned. She did not profess to be involved in the development, marketing or promotion of Red Bull's products, however. As a result, counsel for the Defendants submitted that she had no first-hand knowledge of the relevant facts in relation to the issue of intention to use, while counsel for Red Bull submitted that she did have relevant knowledge as a resulting of being involved in discussions and email correspondence. I accept that Ms Powers did have some relevant knowledge for the reason given by counsel for Red Bull, but it is plain that her knowledge was rather limited. I would have been assisted by hearing from a witness with more knowledge, but Red Bull chose not to call such a witness.
Aaron Newland. Aaron Newland was employed by Red Bull UK from May 2003 to April 2011. Mr Newland was a straightforward witness, but his evidence was mainly directed to a point which was subsequently dropped by the Defendants.
The Defendants' witnesses
Dr Raminder Ranger. Dr Ranger founded SALF in June 1987 and Sun Mark in January 1995. He is the Chairman of both companies. He is understandably proud of the success of his companies. Sun Mark was awarded the Queen's Award for Export Achievement in 1999 and the Queen's Award for Enterprise in International Trade in 2009, 2010, 2011 and 2012. In addition, he has been awarded the MBE for services to business and for community service. I therefore regret to have to say that Dr Ranger was a very poor witness. He feels very strongly that the Defendants are being bullied by Red Bull both specifically in these proceedings and more generally. When he gave evidence he gave vent to this emotion by constantly making speeches and arguing the case rather than giving straight answers to simple questions. I repeatedly had to intervene to try to focus his attention on the need to answer counsel's questions, but despite my interventions he continued in the same manner. As a result many questions had to be repeated several times before he answered them, which substantially prolonged the cross-examination. In addition, his recollection of the chronology of events was demonstrably inaccurate. Furthermore, I did not believe some of Dr Ranger's answers. I do not think he was being deliberately untruthful in his evidence. Rather, his conviction that he was in the right and Red Bull was in the wrong prevented him from giving objective and accurate testimony. Overall, I do not feel able to rely upon his evidence except where it is supported by documentary evidence.
Mrs Renu Ranger. Mrs Ranger was a better witness than her husband, but she too allowed her emotional involvement in the case to get in the way of giving objective and accurate evidence. Furthermore, she seemed to have a poor recollection or understanding of some of the matters covered in her witness statement. Again, therefore, I am unable to regard her as a reliable witness.
Sanjay Raphael. Mr Raphael was a relatively straightforward witness, but his witness statement was both tendentious and inaccurate.
Spencer Burgess. Mr Burgess is an enquiry agent who had been engaged by the Defendants to investigate Red Bull's use...
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