In the battle between two well-known energy drink giants, the High Court has rejected Monster Energy's appeal against the UKIPO's decision to uphold Red Bull's opposition against Monster Energy's application for RED DAWG. Whilst the UKIPO had concluded there was no likelihood of direct or indirect confusion, the opposition had been upheld on the basis that the mark would ride on the coat tails of the RED BULL mark. In rejecting Monster Energy's appeal, the High Court agreed with the UKIPO that registration of RED DAWG would boost its sales as a result of the popularity of Red Bull's product.
In June 2020 Monster Energy applied for a UK trade mark for RED DAWG, covering "non-alcoholic beverages" in Class 32. Red Bull opposed the application and was successful before the UKIPO on the basis that its mark had a reputation, the necessary link was made out, and the RED DAWG mark would take unfair advantage through Monster Energy benefiting from Red Bull's marketing efforts. Monster Energy appealed, broadly on the basis that it had no intention to take advantage of Red Bull's reputation, and that any advantage (which it also disputed) could therefore not be perceived as unfair.
Monster Energy's appeal rested upon the argument that while there might be a link established between the two products, there was no evidence of free riding and no evidence of Monster's intention to take advantage of Red Bull's reputation in their earlier mark. They also argued that the UKIPO did not conduct any evidential analysis.
Red Bull's response was that, according to earlier case law, unfairness could arise without a subjective intention to cause harm. It also argued that the UKIPO did not need to conduct an evidential analysis, as its finding of a link between the products in the mind of consumers was enough to denote the wider effect on the target customers without the need to show specific and material injury.
The High Court decided in favour of Red Bull, concluding that the UKIPO's interpretation of unfair advantage was a correct application of the law. In particular, the Court concluded that the Hearing Officer had found that, irrespective of any subjective intention in relation to the RED BULL mark, Monster Energy had obviously chosen the sign with a view to it having brand significance, and an impact on consumers. The RED DAWG mark was therefore intended to influence the economic behaviour of consumers of Monster Energy drink products (and there was no need to adduce positive evidence that consumers had in fact changed their behaviour). The Hearing Officer was entitled to conclude that there was an unfair advantage even though Monster Energy had no subjective intention to take advantage of the RED BULL mark.
The case demonstrates that, even where there similarity between signs is not enough to cause confusion, it may nonetheless lead to a finding of a link, and a finding that the sign chosen would make it easier to sell products without incurring marketing costs that would otherwise be incurred.