General Court rules in favour of Red Bull in EU TM dispute
The EU General Court has ruled that a Cyprus company’s trademark is invalid on the basis of two prior Red Bull marks.
The Cypriot company Asolo had sought to overturn a European Intellectual Property Office ( EUIPO) decision that invalidated its word sign ‘FLÜGEL’ due to a application for declaration of invalidity from Red Bull.
Both Asolo’s and Red Bull’s marks covered Class 32 of the Nice Agreement, which includes beer and other non-alcoholic drinks.
Asolo relied on two pleas for its case, the first being infringement by the EUIPO board of appeals of Article 70(2) and Article 94(1) of Regulation 2017/1001.
Asolo claimed that EUIPO had infringed Article 70(2), which invites parties to file observations to be fixed by the board. Asolo claimed that the board had refused to invite observations “as often as necessary” in accordance with Article 70(2).
Article 94 states that decisions should be based solely on reasons or evidence on which parties have had the opportunity to present their comments. Asolo claimed that the board arrived at a decision of invalidity based on evidence that Asolo was not given the opportunity to submit observations on.
Secondly, Asolo alleged infringement of Article 52(1)a read in conjunction with Article 8(5) by the EUIPO. The plea was based on complaints contesting the board’s findings on the earlier mark’s reputation, the similarities of the signs, the link between the signs, the unfair advantage gained from the contested mark and due cause for the contested mark.
The General Court dismissed both pleas .
The judgment concluded: “Since none of the pleas in law put forward by the applicant is well founded, the action must be dismissed in its entirety without it being necessary to rule on the admissibility of the applicant’s head of claim seeking dismissal of the application for a declaration of invalidity raised by the intervener.”
The General Court has ordered Asolo to pay costs.
Case History
International Licensing Services first filed an application to register the word sign FLÜGEL in September 1997.
It sought to cover the mark under classes 32 and 33 of the Nice Agreement—which covers beer and other non-alcoholic beverages and all other alcoholic drinks respectively. The trademark was published in 1998 and registered in 1999. The rights were transferred to Asolo in 2006.
On December 5 2011, Red Bull filed an application to invalidate the trademark based on two earlier rights, its word signs VERLEIHT FLÜGEL and RED BULL VERLEIHT FLÜÜÜGEL registered in class 32.
The Cancellation Division declared the mark invalid in January 2015, leading Asolo to appeal. EUIPO’s Fifth Board of Appeal dismissed the appeal in November 2016, upholding the Cancellation Division’s ruling.
This led Asolo to appeal to the General Court in 2017. The court annulled the fifth board's decision as it had found that there was a likelihood of confusion in the definition of class 33 in the analysis.
The Fifth Board of Appeals referred the case back to the Fourth Board, which dismissed Asolo’s arguments, claiming that Red Bull had enjoyed a “substantial reputation” and that Asolo’s mark may take “unfair advantage” of the character of Red Bull’s earlier marks.
Asolo then appealed the Fourth Board’s decision to the general court.
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