On 8 June 2011, the Brussels Commercial Court (the "Court") issued a judgment in a case between Powerdrinks Group BVBA ("Powerdrinks") and Red Bull GmbH ("Red Bull"), two producers of energy drinks, regarding the protection of Red Bull's colour trade mark.
Red Bull is the holder of a Community and a Benelux trade mark for the colour combination silver/blue for energy drinks. Since almost 20 years, it has used these trade marks for its Red Bull energy drink. In 2010, Red Bull noticed that Powerdrinks used the same colours for its own products. Red Bull then filed a cease and desist action against Powerdrinks on the basis of its trade marks.
Trade mark with reputation
First, the Court found that Powerdrinks had infringed Article 2.20.1.c of the Benelux Treaty regarding Intellectual Property (Benelux-Verdrag inzake de Intellectuele Eigendom / Convention Benelux en matière de propriété intellectuelle - the "BTIP") and Article 9(1)(c) of Council Regulation (EC) No 207/2009 on the Community trade mark (the "CTM Regulation"). These provisions allow the owner of a trade mark with a reputation to act against the use of a sign which is identical with or similar to his trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, provided that the sign concerned is used without due cause and that this use takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
The Court recalled that the scope of these provisions is not limited to the use of the trademark with regard to dissimilar goods or services, but also permits the owner of a well known trade mark to object to the use for the sign for goods or services which are similar or identical to those for which the trade mark is registered.
Further, the Court found, on the basis of the market shares of Red Bull and the investments made by Red Bull, that the Red Bull colour combination had become a trade mark with a reputation. The Court rejected Powerdrink's argument that the mere combination of the colours blue and silver does not have a strong distinctive character. The Court pointed out that this position would imply that a colour trade mark could never have a reputation given that it is never used separately and without verbal signs.
The Court also stated that the relevant public establishes a link between the colour trade marks of Red Bull and the cans produced by Powerdrinks, which implies that the required degree of similarity between the trade marks and the sign used by Powerdrinks is demonstrated.
The Court held that Powerdrinks took unfair advantage of the repute of Red Bull's trade marks. To this end, the Court applied the decision of the European Court of Justice ("ECJ") of 18 June 2009 in the case L'Oréal v Bellure (See, Van Bael & Bellis on Belgian Business Law, Volume 2009, No. 6, p. 7) and found that Powerdrinks had sought to ride on the coat-tails of Red Bull's trade marks in order to benefit from the power of attraction, the reputation and the prestige of those marks and to exploit the marketing effort undertaken by Red Bull in order to create and maintain the marks' image. Finally, the Court also decided that Powerdrinks had used the blue/silver colour combination without due cause.
Similar marks for identical goods - risk of confusion
Second, the Court decided that Powerdrinks had infringed Article 2.20.1.b of the BTIP and Article 9(1)(b) of the CTM Regulation. Pursuant to these provisions, a trade mark owner is entitled to prevent the use of a sign which creates a likelihood of confusion on the part of the public due to its identity with or similarity to his trade mark and the identity or similarity of the goods or services at hand with the goods or services covered by the trade mark.
The Court accepted the possibility that a consumer is confused with regard to the origin of the cans produced by Powerdrinks due to the strong resemblance between the Red Bull trade marks and the colours used by Powerdrinks. According to the Court, the differences between the sign used by Powerdrinks and the trade marks of Red Bull are secondary elements which cannot influence the general impression created. In this respect, the Court attached importance to the fact that the relevant public (i.e., consumers of energy drinks) has an average to low level of attentiveness.
Parasitic competition
Finally, the Court stated that Powerdrink's practices amounted to parasitic competition within the meaning of Article 95 of the Belgian Law on Market Practices and Consumer Protection (Wet betreffende marktpraktijken en consumentenbescherming/Loi relative aux pratiques du marché et à la protection du consommateur). According to the Court, Powerdrinks made use of the high investments made by Red Bull and took advantage of the goodwill attached to Red Bull's trade marks.
