OAMI +34 965131344
2/12/2014 15:20:33
PAGE
1/028
OCHWP- FAX001
OHIM 2 december 2014, IEF 15454 (Red Bull tegen Asolo)
www.IE-forum.nl
OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRADE MARKS AND DESIGNS)
OPERATION S DEPARTMENT
Cancellation Division
C406B
Alicante, 02/12/2014
BIRD & BIRD LLP
P.O. Box 30311
NL-2500 GH The Hague
PAiSES BAJOS
Notification of a decision to the CTM proprietor/IR holder
Your reference:
lnvalidity number:
Contested trade mark:
Fax number:
ASAOLT.0003
000006090 c
000637686
FLÜGEL
00 31-703538882
Please find attached the decision terminating the proceedings referred to above. The
decision was delivered on 02/12/2014.
Please note that decisions of the Cancellation Division are not signed by the
responsible officials but only indicate their full name and bear a printed seal of
the Office in accordance with Rule 55{1) CTMIR.
Oana-Aiina STURZA
*.*
* *** *
*
*** *
Enclosures (excluding the cover letter): 27 pages
Avenida de Europa, 4 • E - 03008 Alicante • Spain
Tel. ~ 34 96 513 9100 • Fax ~34 96 513 1344
www,oaml europa eu
OAMI +34 965131344
* * * **
*• *
* * * **
2/12/2014 15 : 20 : 33
PAGE
2/028
OCHWP- FAX001
OFFICE FOR HARMONIZATION IN THE INTERNAL MARKET
(TRAOE MARK5 AND DESIGNS)
Cancellation Division
CANCELLATION No 6090 C (INVALIDITY)
Red Bull GmbH, Am Brunnen 1, 5330 Fuschl am See, Austria (applicant) , represented
by Hogan Lovells, Aven ida Maisonnave 22 , 03003 Alicante, Spain (professional
representative)
aga i nst
Asolo Ltd. , Theklas Lysioti 29, Cassandra Centre , 3rd Floor, 3030 Limassol , Cyprus
(CTM proprietor). represented by Bird & Bird LLP, P.O. Box 3031 1, 2500 GH , The
Hague, the Netherlands (professional representative).
On 02/12/2014 , the Cancellation Division takes the following
DECISION
1.
The application for a deelaratien of invalidity is upheld.
2.
Community trade mark No 637 686 is declared invalid in its entirety.
3.
The CTM propriator bears the casts, fixed at EUR 1 150.
REASONS
The applicant filed an application for a deelaratien of invalidity against all the goods of
Community trade mark No 637 686 for the word mark 'FLÜGEL', filed on 24/09/1997
andregistered on 01 /02/1999 for goods in Classes 32 and 33. The application is based
on the following earlier rights: (1) Austrian trade mark registration No 175 793 for the
word mark ' ... VERLEIHT FLÜGEL' and (2) Austrian trade mark registration No 161 298
tor the word mark 'RED BULL VERLEIHT FLÜÜÜGEL'. The applicant invoked
Artiele 53(1)(a) CTMR in conneetion withArtiele 8(1)(b) and Artiele 8(5) CTMR.
SUMMARY OF THE PARTIES' ARGUMENTS
The applicant argues that there is a likelihoed of confusion on the part of the Austrian
public since the goods at issue are identical or high ly similar and the marks are visually
and phonetically highly similar and eoneeptually identieal. Furthermore, it shows that
the use of the eontested mark would be detrimental to and take unfair advantage of the
repute and the distinctive character of the earlier marks, ' ... VERLEIHT FLÜGEL' and
'RED BULL VERLEIHT FLÜÜÜGEL', which enjoy a high reputation in the European
Union and in particular in the relevant territory, Austria. The applicant filed , as
Enelosure 1, copies of the registration certificates of the earlier marks on which the
application is based (documents in German and the required translations into English)
and copies of documents issued by the Austrian Patent Office evideneing the extension
of the term of proteetion until 30/05/2018 (for earliermark registration No 175 793) and
until 31 /12/2015 (for earlier mark registration No 161 298) . The applicant also
submitted, as Enclosures 2-5, evidence to demonstrate the reputation of the earlier
OAMI +3 4 965131344
2/12/2014 15 : 20 : 33
Decision on Cancellation No 6090 C
PAGE
3/028
OCHWP- FAX001
page: 2 of 27
marks and its claims under Artiele 8(5) CTM R (documents which will be listed and
analysed further in the decision).
In its observations in reply of 20/03/2012, the CTM propriator raises the following tour
issues:
(1 ) The application fora deelaratien of invalidity is inadmissible because Red Bun
acquiesced in the use of the contested CTM for nearly nine years or at least tor
five years and a half in Austria. The CTM propriator bases this claim on the
fol lowing arguments:
- 'Red Bull' was introduced in the Netherlands in the beginning of 1996, as
evidenced by a press release dated 15/01/1996. On 07/10/1996, Flügel NV (the
owner of the 'Fiügel' trade marks at that time) sent a cease and desist letter to
Red Bull Netherland BV (submitted as Exhibit 2);
- In 2000, proceedings started in the Nether1ands between Red Bull and Flügel
NV and it is from the sixth paragraph of the writ of summons (submitted as
Exhibit 3) that Red Buil became aware, if not already, of the existence of the
CTM 'Fiügel' (word mark). By means of a counterclaim , Red Bull tried to have
the Benelux trade mark 'Fiügel' declared invalid. The District Court of Utrecht
gave its judgment on 08/08/2001 and rejected the counterclaim . Red Buil filed
an appeal but did not submit the appeal grounds. From that moment on , Red
Buil did nat contest the 'Fiügel' trade marks and therefore started the
acquiescence of the use and existence of these trade marks, including the
contested CTM ;
- On 04/10/2010, almast nine years after its last action, Red Buil started
proceedings against the use of several 'Fiügel' trade marks, including the
contested CTM in Austria. In the course of these proceedings, Red Bull
declared that it has been monitoring the 'Fiügel' trade marks regularly over the
past years . 'Fiügel' was put on the Austrian market in 1997 and reintroduced
from the beginning of 2005. At that time Red Bull had knowledge of the
contested CTM and since it monitored the trade marks it is very likely that it was
aware of the use of the contested CTM in Austria. Therefore, the time of
acquiescence of the contested tra de mark is at least five years and a half.
(2) The aarlier marks on which the application is based are invalid. To support this
claim , the CTM propriator puts forward the following arguments:
- The aarlier mark •.. . VERLEIHT FLÜGEL' has not been used as a tra de mark
but only in combination with 'Red Bull'. Furthermore, this aarlier mark has never
been used for alcoholic drinks in Austria since it is prohibited to mix energy
drinks, such as 'Red Bull' with alcohol;
- The aarlier marks have never been used as a trade mark in the five-year
period befare the filing of the nullity request. The slogans are used in a
descriptive way indicating that the product 'Red Buil' gives the customers a
feeling of being able to fly (Red Buil gives you wings) and therefore they are
used as an advertisement of the abilities of the product and not to indicate the
origin. The CTM propriator refers to some of the marketing materials provided
by the applicant and also to an affidavit given by Mr. D. Mateschitz and
submitted by Red Bull dUiing the proceedings mentioned under point (1) above,
whereby the farmer declared inter alia, that consumers began to associate the
slogan 'Verleiht Flügel' with the vitalising effect of the product and through
intense marketing the sel/ing fine came to symbolise to consumers that they
wou/d be uplifted and figuratively 'deve/op wings' after the consumption of Red
OAMI +34 965131344
2/12/2014 15:20 : 33
Decision on Cancellation No 6090 C
PAGE
4/028
OCHWP-FAX001
page: 3 of 27
Bull. [ .. .] To make the slogan appealing to the consumerwe always use it in the
/oca/language . lt further states that the relevant public considers a slogan in
the first place as an advertisement-message and nol directly as a sign to
distinguish goeds or services. Therefore and in the absence of proef of genuine
use of the earlier marks, the applicant's claims should be dismissed.
(3) There is no likelihoed of confusion within the meaning of Artiele 8(1)(b) CTMR,
because the goods for which the earlier marks are used in Class 32 are
dissimilar te the goods for which the contested CTM is registered in Class 33
and the signs are not highly similar. The CTM propriator further argues that
there is no evidence of actual risk of confusion since the market survey of
October 2010 has not been carried out correctly. lt also shows that Red Bull
itself claimed in an aarlier court case in Germany that there was no likelihoed of
confusion between the contested CTM at issue and the Gerrnan national mark
" .. . VERLEIHT FLÜGEL' (owned by Red Bull) and this defence was accepted by
the German Patent and Trade mark Office.
(4) There is no misappropriation and dilution within the meaning of Artiele 8(5)
CTMR. The CTM propriator essentially claims that: (i) the slogans have not
been used astrade marks, (ii) there is no identity or high similarity between the
signs at issue, (iii) the earlier marks do not have a reputation and (iv) Red Bull
failed to adduce prima facie evidence of a future risk of unfair advantage or
detriment. lt also shows that it has created a separate position in the market of
alcoholic party drinks by applying a uniqua branding for its product and
therefore has a due cause to use its own trade mark in Europa to market its own
product.
Additionally, the CTM propriator informed the Office that on 14/01/2011 , it filed with the
Austrian Patent Office a request for the annulment of the aarlier marks on which the
application for a deelaratien of invalidity is based. Consequently, it requested the
suspension of the cancellation proceedings until a final decision is taken in those
proceedings.
In support of its observations, the CTM propriator filed evidence by fax (confirmation
copy foliowed on 26/03/2012). On 10/04/2012 and 17/04/2012 it further submitted the
translation into English of some of the exhibits initially filed in German or Dutch. The
evidence consistsof the following :
•
•
•
•
As Exhibit 1: Red Buil Nederland BV press release of 15/01/1996.
As Exhibit 2: Draftof a cease and desist letter addressed to Red Bull Nederland
BV in relation to the use of the trade mark 'Fiügel' in Benelux. According to the
document, Flügel NV, as owner of the mark 'Fiügel ' (protected in Benelux since
1996) objects to the use by Red Buil of the name Flügel in advertising and to
the application of the same on the goeds and their packaging and requests the
latter to refrain from the use thereof on all Red Bull's presentations. The CTM
propriator states that the letter was sent on 07/10/1996.
As Exhibit 3: Writ of summons of 10/08/2000 submitted, inter alia, by Flügel NV
against Red Buil Nederland BV and Red Buil GmbH in conneetion with the
infringement by Red Bul I of the designation 'Fiügel'.
As Exhibit 4: Judgment of 08/08/2001 of the District Court of Utrecht ordering
Red Bull to cease and nat resume the infringement of the trade mark rights of,
among ethers, Flügel NV, more specifically to cease and not resume the use of
the designation 'flügel' or equivalent marks including the designation Flügerl.
Further, by means of the same judgment the Court cancelled Red Bull's
OAMI +34 965131344
2/12/2014 15 : 20 : 33
Decision on Cancellation No 6090 C
•
•
•
•
•
PAGE
5/028
OCHWP- FAX001
page: 4 of 27
Benelux trade marks 'Fiügerl' (dated 14/01 /1998) and ' .. . verleiht Flügel' (dated
12/06/1 998).
As Exhibit 5: Red Bull's writ of summons of 31/10/2001 submitted in appeal.
As Exhibit 6: Red Buil marketing materials from Austria.
As Exhibit 7: Affidavit of Mr. D. Mateschitz from November 2000. The CTM
propriator states that the document was submitted by Red Bull in the course of
the above mentioned Dutch proceedings.
As Exhib it 8: Red Buil marketing materials from ltaly, Spain and the UK.
As Exhibit 9: Letter to the German Patent and Trademark Office sent on
16/10/2001 by Red Bull's representatives in the course of a trade mark dispute
against Red Bull's German registration tor the mark ' .. . verleiht flügel' initiated
on the bas i s ~
?.~ . ~~:..~ntested CTM 'Fiügel' and of the international registration
.
!.
•
•
•
•
'
No 653 993
.
As Exhibit 10: Decision of 20/01 /2003 of the German Patent and Tradamark
Office rejecting the objections raised against Red Bull's German trade mark
registration on account of the absence of a danger of confusion between the
marks at issue under the relevant German law.
As Exhibit 11 : Pages 2 and 4 of Red Bull's submitted overview of Red Buil
judgments.
As Exhibit 12: Request for the cancellation of the earlier mark 'RED BU LL
VERLEIHT FLÜÜÜGEL' filed with the Austri an Patent Office on 14/01/2011 .
As Exhibit 13: Request for the cancellation of the earlier mark ' ... VERLEIHT
FLÜG EL' filed with the Austri an Patent Office on 14/01/2011 .
On 14/05/2013, aftera period of suspension of the proceedings, the applicant informed
the Office that the cancellation proceedings against the earlier marks are still pending
before the Austrian Patent Office.
The applicant wrote again on 18/03/2014 to inform the Office that the earlier marks are
valid (as the proceedings befare the Austrian Patent Office were terminaled and the
decision became final) and to request the resumption of the cancellation proceedings at
hand. lt also submitted further arguments to rebut the claims of the CTM proprietor. In
particular, it showed that
- The Austrian Patent Office confirmed in its decision of 05/03/2013 that the
earlier marks have been genuinely used for energy drinks ;
- Red Buil did not have any knowledge about the use of the contested CTM in
Austria for a period of five successive years. Moreover, there can be na
acquiescence when the propriator acted in bad faith and it is obvious that the
CTM propriator took the mark 'FLÜGEL' from 'FLÜGERL', a mixed drink of (red)
vodka and Red Bull energy drink, which was already fameus in Austria.
Therefore, the CTM propriator was essentially copying the fameus mixed-drink,
the name of which derives trom and is associated with the 'FLÜGEL' concept
surrounding the applicant's fameus Red Buil energy drink;
- The earlier marks enjoyed a reputation in the relevant territory at the time of
fil ing the contested CTM, as demonstraled by the two consumer surveys
previously submitted . The CTM proprietor's claims as to these surveys being
flawed are unfounded and the surveys constiluts valid evidence;
- The decision of 2003 of the German Patent Office is irrelevant for various
reasons, among ethers, because trade mark law significantly developed since
OAMI +34 965131344
2/12/2014 15 : 20 : 33
PAGE
6/028
Decision on Cancellation No 6090 C
OCHWP- FAX001
page: 5 of 27
that time. The applicant refers to the judgment of 06/10/2005 , C-120/04,
'Thomson Life' and argues that in any case 'FLÜGEL' retains its distinctive
character within the earlier marks. Moreover, OHIM is not bound by any
national decision;
- The consumer survey submitted on 09/12/2012 as Enelosure 2 shows that a
great deal of the relevant Austrian consumers are reminded of the applicant
when seeing the CTM proprietor's product and therefore it is apparent that the
contested CTM would take advantage of the aarlier marks' reputation ;
- Additionally, the Superior High Court of Vienna in its decision of 25/05/2012
(concerning litigation between the parties at issue in the current proceedings)
held in the sectien related to undisputed facts that: since the end of the 1980s,
barkeepers merchandised and distributed under the name 'Fiügerl' on request
self-mixed drink consisting of the energy drink Red Buli and red vodka, in
particu/ar in ski resorts in Tirol. The idea for this project ca me from the plaintiff
and intended the promotion of the energy drink Red Bull. By now, barkeepers
utilise instead of Red Bull also other energy drinks to mix the 1FWgerl 1 drink.
Since 199311994 on occasion of his winter ho/idays, the rnanaging director o;
the defendant and co-defendant got to know severa/ aleoho/ie mixed beverages
{. .] which were served under na mes /ike [ ... ] ' Flügerl 1, the latter being a mixture
of Vodka and Red Bul/. He chose the name Flügel', because he wanted to
benefit from the name Fiügerl which was a/ready wel/ known among Dutch
tourists and as he considered the word 'F/Ogef' appropriatel because it was a
German word[ ... ]. When Marcel Volkering proteeled the term F/Ogef' as an
international figurative trade mark in March of 1996, he was we/I aware that the
p/aintiff used the advertising slogan '... verleiht f/Ogef' for its energy drink [sic].
1
I
1
1
In support of its arguments, the applicant filed the following evidence:
•
•
•
As Enelosure 1: Copy of a de cision taken on 05/03/2013 by the lnvalidity
Division of the Austrian Patent Office in the cancellation proceedings No
2/2011-8 and No 3/2011 -8 against the earlier marks (documents in German and
English translation). The evidence shows, among ethers, that Austrian and
European law confirms that advertising slogans are registrable as a trade mark.
Accordingly, this is not impaired by the fact that trade marks contained a
message. The law states that slogans can constitute a distinguishing mark,
provided they do nol only consist of a conventional advertising message, but
are origina/ and distinctive, require a minimum amount of interpreta/ion or give
the relevant pub/ie cause for thought. lf a successtuf slogan, like this one, is
perceived as a trade mark by more than 90% of the relevant pub/ie, it seems
absurd to deny that it has the aforementioned qualities. The app/icantls apinion
that advertising slogans are not used as a distinguishing mark in principle is in
contradiefion to the clear /ega/ situation. [ ... ] The component/slogan
1
. . . VERLEIHT FLÜGEL I is disfinelive
in itself and is not understood as a
'promotional indication of the product 1S effect'. Rather, the target groups
concemed immediately associate the slogan with Red Bul/ energy drinks, even
without the words Red Bull added to it [ ...}. This shows that, even in its modified
farm and without the words Red Bul/, the slogan serves to identify the goods as
originating from a particu/ar company.
As Enelosure 2: Printouts from the official database of the Austrian Patent
Office in relation to the earlier marks showing that bath marks are registered for
energy drinks in Class 32.
As Enelosure 3: Copy of a decision of 28/03/2012 taken by the Cancellation
Division of the OHIM in case 5092 C (document in German) . The applicant
claims in its written statements that in a parallel matter initiated by a party
OAMI +34 965131344
2/12/2014 15:20:33
Decision on Cancellation No 6090 C
•
PAGE
7/028
OCHWP-FAX001
page : 6 of 27
related to the CTM proprietor, the Cancellation Division confirmed the genuine
use of CTM reg istration No 635 391 'GIVES YOU WINGS' for non-alecho/ie
drinks, namely energy drinks.
As Enelosure 4: Internet printouts trom www.justminiatures.co.uk,
www.amazon .co.uk,
www.appiehein.com ,
www.plunderguide.com
and
www.drinksmixer.com (eleven pages) in relation to the sale of the product '
I
•
•
•
•
Flügel' (
as 'Vodka Energy Drink'.
As Enelosure 5: Several decisions of the Boards of Appeal accepting market
surveys from Research lnstitut GfK (the same entity that carried out one of the
surveys filed by the applicant) as fellows: (i) decision of 11/01/2006, R 1/2005-4
- Hilti-Koffer (document in German and partial English translation) and copy of a
survey, (ii) decision of 30/11/2009, R 355/2007-4- Orange & Grey (colour mark)
(document in English) and copies of two surveys, (iii) decision of 11/06/2009, R
1190/2008-1 - Humana/Humana (document in English) and copy of a survey,
(iv) decision of 22/01/2010, R 1673/2008-2 -Fiesta/Fiesta (fig) et al. (document
in English) and copy of a survey, (v) decision of 26/02/2010, R 433/2009-2 micuna intime bébé (tig mark)/bebe et al. (document in English) and copy of a
survey, (vi) decision of 21/02/2011 , R 886/2010-2- BABYWAVE CREATIVE
(fig mark)/BABYLOVE (document in English) and copy of a survey and (vii)
decision of 11/12/2012 , R 513/2011 -2 - Shape of a four-finger chocolate bar
(30 mark) and copies of six surveys.
As Enelosure 6: Copy of a decision of 25/05/2012 taken by the Superior High
Court of Vienna in litigation between, inter alia, the parties at issue in the
present proceedings (document in German) .
As Enelosure 7: A market survey conducted by the market research company
Fessei-GfK lnstitut in June 1997 in Austria, in relation to 'Fiügerl' (document in
German and partial English translation). The evidence shows that, with
raferenee to a drink, of 300 discotheque goers. 60% spontaneously associated
Red Bull with a 'Fiügerl'.
As Enelosure 8: Advertising samples in relation to 'Fiügerl' and 'Red Bull' energy
drink (tour pages) .
The CTM propriator repl ied on 01/09/2014. lt mainly reiterated the claims previously
submitted on 20/03/2012 on the invalidity of the earlier marks because they have not
been used as trade marks, on the inadmissibility of the application on account of
acquiescence, on the absence of likelihoed of confusion under Artiele 8(1)(b) CTMR
and of misappropriation and dilution under Artiele 8(5) CTMR. In particular, it states
that:
-The aarlier trade marks are merely slogans and are only used as such. They
have consistently been used in the advertising of the RED BULL energy drink in
a descriptive way. Red Bull has used this in a very long lasting, iconic marketing
campaign that includes short cartoon movies. In these movies, a person
instantly grows wings after drinking a can of RED BULL and then flies off, after
which a shot is shown that contains the RED BULL can and the slogan RED
BULL VERLEIHT FLOOOGEL. Thus, the expression 'gives you wings ' or
'verleiht flüüügel'tverleiht flügel' is used in a humcristic way to describe the
alleged main characteristics of Red Bul/, namely that it gives you so much
energy that it makes you feellike you can fly.
OAMI +34 965131344
2/12/2014 15:20 : 33
Decision on Cancellation No 6090
c
PAGE
8/028
OCHWP- FAX001
page: 7 of 27
- In response to the applicant's arguments on the alleged bad-faith when
introducing the trade mark 'Fiügel', it refers to a judgment of the Austrian
Higher Regional Court wherein it is stated that as has been established, the
rnanaging director of defendant 1 and 2, when submitting the word and
figurative mark with the word component 'Fiügel', did not intend to benefit from
the appellant's welf known slogan at the time 'RED BULL VERLE/HT FLOGEL'.
/nstead he wanled to build on the designation 'Fiügerl', which he got to know
through a mixer drink consisting of Red Bu/1 and vodka, oftered to him, yet
which is not manufactured by the appellant or by any other drinks manufacturer
under any trade mark right.
The CTM propriator submitted the following evidence in support of its claims:
•
•
•
As Exhibit 14: Decision of 25/05/2012 of the Higher Regional Court of Vienna
rejecting the appeal brought by Red Bull GmbH against the judgment of
15/07/2011 of the Commercial Court of Vienna (document in German and
English translation). The dispute concerned the product category of the
defendants (inter alia, the CTM proprietor) with the word component 'Fiügel',
image component a duck presented as a comic figure with wide open eyes and
a wide open beak, for an alcoholic mixer drink and the older marks of the
appellant (Red Buil GmbH) 'Red Buil Verleiht Flüüügel' and ' ... Verleiht Flügel',
each for a non-alcoholic energy drink.
As Exhibit 15: Decision of 18/09/2012 of the Supreme Court of Vienna rejecting
the extraordinary appeal brought by Red Bull against the decision of 25/05/2012
of the Higher Regional Court of Vienna (document in German and English
translation).
As Exhibit 16: Proof of use of trade mark 'Fiügel' on the Austrian market for the
period 2005-2010, as fellows:
- Copy of a flyer dated 2009 showing the winter program tor the Apres-Ski Disco
dancing 'Der Tiroler' and contain
a reference to a every Wednesday 'Fiügel'
party and showing the image
- Swom Statement given on 14/01/2011 , by Tatjana Brehler. acting as a
representative tor Flügel österreich at Flügel International NV (document in
German and English translation) . The evidence states essentially that: (i) in
Austria, 'Fiügerl' is understood to mean a recipe for an alcoholic drink mixed by
the catering establishments, consisting of any power or energy drink and any
vodka and at least in a number of seven establishments (located in Westendorf,
Zeil am Ziller, Wörgl and Gerlos) 'Fiügerl' is not mixed with Red Buil energy
drink and (ii) 'Fiügel' is relatively well-known in Tirol and Salzburg and since
early 2005 many events have been sponsored by 'Fiügel', including in March
2005/2006/2007/2008/2009/2010 'Feestweek' in Westendort with approx. 1 500
visitors per year, in December 2008 'Rave on Show' in Saalbach with approx. 6
000 visitors, in winter 08/09 and 09/10, every Monday 'Fiügel' promotion in
Goass Stal! in Hinterglemm with approx. 1 500 visitors, in winter 09/09 'Fiügel'
promo Tour with Rob Ronaids (15 establishments in Tiroland Salzburg) and in
January 2010, 'Fiügel' promo Tour (28 establishments in Tirol and Salzburg) . lt
is further mentioned that in the view of Tatjana Brahier Red Bul/ GmbH a/ways
knew about the activities concerning Flüge/, because the company
representatives of Red Bul/ GmbH a/so visited these establishments that se/I
Flügel on a regu/ar basis.
OAMI +34 965131344
2/12/2014 15 : 20 : 33
PAGE
9/028
Decision on Cancellation No 6090 C
OCHWP- FAX001
page: 8 of 27
- Copies of five invoices (dated 25/01/2005 , 04/02/2005, 09/02/2005,
18/02/2005 and 17/03/2005) issued by Flügel International NV and addressed
to Riedhart GmbH & Co KG, Wörgl, Austria each for the sale of 300 boxes of
Flügel.
- Copy of an assurance report issued on 30/12/2010 by Facet Audit BV and
addressed to Flügel International NV asserting that the circulation of Flügel
International NV in Austria during 2005 up to 2010 as present in the statement
attached thereto is, in all material aspects, correct. The statement provides the
following information:
The drculatlon al Alltftl b.,ttl~s 11.0 n'll) Ir. Austrl~ bv FIUt,'<!l lnttrl\atlonai!I.V. duit~ 2o:Jeo up to 2010 Is
2005: l~ t~u <t' l u p to $<>P 1 ~m b ~r
up 10 De: em::.er
'200~ : Octo~ r
200~:
Tota:
2~
2007
1008
2009
~ 0 10
Tou l ;oos up lo Wlc
~slol ~yr; :
60.000
~
10! .000
12V.OOD
248.0::0
Jol5.2ll0
413.:.r.O
~
2.UI.I.ó0
- Copy of a flyer advertising 'The Snow & Fun Party' to held between 14-15-16
March 2005. The flyer is in English and Dutch and contains a raferenee to
m.m.v. Flugel Events and Westendorf.
On 24/09/2014 , the Office informed the parties that the adversarial part of the
proceedings was closed and that a decision on the substance would be taken on the
basis of the evidence befare it.
ACQUIESCENCE
General considerations
According to Artiele 54( 1) and (2) CTMR, where the propristor of an earlier mark or
sign has acquiesced . for a period of five successive years. in the use of a later CTM in
the territory where the aarlier mark or sign is protected while being aware of such use,
it is no langer entitled on the basis of that earlier mark or sign to apply for a deelaratien
of invalidity against the later CTM , unless registration of the later CTM was applied for
in bad faith .
As stated by Advocate General Trstenjak in paragraph 60 of the Opinion delivered on
03/02/2011 in case C-482/09 Budëjovicky Budvar, národni podnik/Anheuser-Busch,
lnc., the /ega/ construct of the limitation of lights gives specific form to the principle of
good faith, more precisely the /ega/ concept expressed in the maxim 'venire contra
factum proprium', namely thaf where there is contradictory conduct on the part of the
holder of a right, he wil/ not be permitled to exercise fhat right against the person
subject to it. Under the laws of the Member States, a light is generally regarded as lost
byestappel if the light-holder has, over a certain period (point in time), failed to assert it
(inactivity of the person entitled) and the person subject to it has acted in reliance, and
was also on an objective assessment of the conduct of the right-ho/der entilled to act in
reliance (legitimate expectation), on the right-ho/der not asserting the light in future
either. In that case the breach of good faith lies in the unfair delay in asserting fhe light.
What is proteeled is the confidence in a certain /ega/ situation of the person who is in
principle subject to the light, a confidence which the /aw regards as justified in view of
the specific oircumstances of the particu/ar case.
OAMI +34 965131344
2/12/2014 15:20:33
Decision on Cancellation No 6090 C
PAGE
10/028
OCHWP- FAX001
page: 9 of 27
The aim of Artiele 54 CTMR is therefore to penalise the proprietars of earlier trade
marks whohave acquiesced, fora period of five successive years , intheuse of a later
Community trade mark while being aware of such use, by excluding them from seeking
a deelaratien of invalidity ar to oppose the use in respect of that trade mark, which will
then, therefore, be able to coexist with the earlier trade mark Gudgment of 28/06/2012,
T-133/09 and 134/09 'Antonio Basile 1952', para. 32) .
As stated by the Court of Justice in its judgment of 22/09/2011 (C-482/09, Budëjovicky
Budvar, národni podnik!Anheuser-Busch lnc.), the prerequisitas for tha running of the
period of limitation in consequence of acquiescence prescribed in Artiele 9(1) of the
Directive 89/104 (the meaning of this provision being identical to the provision of
Artiele 54 CTMR, as stated by the Court in paragraph 35 of the same judgment), are,
first, registration of the later trade mark in the Member State concemed, second, the
appfication for registration of that mark being made in good faith, third, use of the later
trade mark by its propriator in the Member State where it has been registered and,
fourth , knowledge by tha propriator of tha aarlier trade mark that tha later trada mark
has been registered and usad afterits registration.
All these conditions must be fulfilled . lf they are, the limitation on acquiescence will only
apply to the contested goods or services for which the later CTM has been used.
Therefore the onus is on the proprietor.of the contested CTM to show that:
•
•
•
The contested CTM was used in the Europaan Union (or in the Membar State
where the earlier trade mark is protected) during a period of at least five
successive years.
The invalidity applicant was aware of this or could reasonably be presumed to
be so aware.
Although the invalidity applicant could have stoppad the use, it remained
nevertheless inactive. This is not the case where there was a license or
distribution relationship between the parties, so that the use by the CTM
propriator was for goeds it lawfully obtained from the invalidity applicant
Gudgment of 22/092011 , C-482/09, 'Budweiser', para. 44; decision of
20/07/2012, R 2230/2010-4).
The period of limitation in consequence of acquiescence starts running from the time
when the propriator of the earl ier trade mark becomes aware of the use of the later
CTM (emphasis added) . lt is at this moment in time that it has the option of nat
acquiescing in its use and, therefore, opposing it or seeking a declaration of invalidity of
the later trade mark üudgment of 28/06/2012, T-133/09 and 134/09 'Antonio Basile
1952', para. 33) . An example of where the propriator could reasonably be presumed to
be aware of the use of the contested CTM is where bath proprietars have exhibited
goods or services under the respective marks at the same event.
Furthermore it must be mentioned that Artiele 54 CTMR is not applicable when the
contested CTM was filed in bad faith . This exception will only be considered if it is
argued and proven by the applicant.
In the present case, the CTM propriator essentially claims that the applicant has
acquiesced in the use of the contasled CTM for nearly nine years or at least tor five
and a half years in Austria. The arguments put forward by the CTM proprietor, the
counterarguments of the applicant and the evidence related thereto have already been
summarised and respectively listed above under 'Summary of the parties' arguments'
section.
OAMI +34 965131344
2/12/2014 15:20 : 33
Decisio n on Cancellation No 6090 C
PAGE
11/028
OCHWP- FAX001
page: 10 of 27
Assessment of the conditions
1) The contested CTM has been registered for more than five years without being
challenged by the owner of the earlier right
In the present case, the contested CTM was registered on 01/02/1999 and the
application for a deelaratien of invalidity was filed on 05/12/2011 . Furthermore, as it is
apparent from the file , the applicant did nat previously oppose the registration of the
CTM in question and the application for a deelaratien of invalidity seems to be the first
act by which the applicant took measures to challenge the contested CTM . lt is
therefore the apinion of the Cancellation Division that this first condition is met.
2) The CTM propriator used the contested CTM in the territory of the Member
State where the earlier right is protected and the owner of the earlier right was
aware of the use of the contested CTM after its registration
The application for a deelaratien of invalidity is based on two Austrian trade marks.
Therefore, the CTM propriator had to submil evidence that the contested CTM was
used, for more than five successive years in the territory of this Member State in
conneetion with the goods for which it is was reg istered, specifically the following:
Class 32:
Beers; mineral and aerated waters and other non-aleoho/ie drinks; fruit
drinks and fruit juices; syrups and other preparations for the preparatien
ofdrinks.
Class 33:
Aleohotic drinks (except from beers).
lt must be pointed out from the outset that in order to comply with the requirement of
the five years of successive use, the consecutive five-year period in which the applicant
should have been aware or could reasonably be presumed to have been aware of the
use of the contested CTM and at the same time acquiesced to the use, must have
begun prior to the date of 05/12/2006 (since the application for a deelaratien of
invalidity wasfiledon 05/12/2011).
lt follows from the foregoing that particular importance must be given to the documents
that predate December 2006 since it is this evidence that will allow the Cancellation
Division to assess whether or nat the applicant became aware (or could reasonably be
presumed to have been aware) of the use of the contested CTM in Austria and thus
knowingly toleraled the use for five successive years.
The evidence of use that refers to the time period before 05/12/2006 consists of copies
of five invoices dated 2005, a copy of a flyer advertising a party to take place in March
2005 in Westendorf, the assurance report from Facet Audit BV and the statement of
Tatjana Brehler. Nevertheless in the opinion of the Cancellation Division these
documents alone are nat sufficient to allow a conclusion that the applicant was aware
or could reasonably be presumed to be aware of the use of the contested CTM since
the beginning of 2005 and that it acquiesced in the use thereof for a period of five
successive years.
lt is true that the evidence shows some use of the contested mark in conneetion with
some of the goods tor which it is registered . In particular, the invoices dated between
January and March 2005 evidence the sale of 'Fiügel' to a company located in a small
OAMI +34 965131344
2/12/2014 15 : 20 : 33
Decision on Cancellation No 6090 C
PAGE
12/028
OCHWP- FAX001
page: 11 of 27
town in Austria. The assurance report issued by Facet Audit BV certifies that in 2005
the circulation of 'Fiügel' botties (20 mi) in Austria was of 108 000 and of 120 000 in
2006. lt must be noted however that use per se is not sufficient to successfully prove
acquiescence. The CTM propristor must demonstrata that it has actually used its mark
in the relevant territory to a sufficient degree and extent so that it can be concluded that
the applicant was or had to be aware of this use. The Cancellation Division considers
that the evidence filed in this case is not sufficient.
The statement of Tatjana Brehler contains references to several events sponsored by
Flügel, including in March 2005/2006 (the festival 'Feestweek' in Westendorf) . lt is also
stated that in her apinion Red Bul/ GmbH always knew about the activities conceming
Flüge/, because the company representatives of Red Bul/ GmbH a/so visited these
establishments that se/I Flügel on a regu/ar basis. While statements drawn up by the
interested parties themselves, or their employees, are admissible means of evidence,
however, they are generally given less weight than independent evidence, because the
perception of the party involved in the dispute may be more or less affected by its
personal interests in the matter. However, this does not mean that such statements do
not have any probative value at all. The final outcome depends on the overall
assessment of the evidence in the particular case. This is because, in genera!, further
evidence is necessary, since such statements have to be considered as having less
probative value than evidence originating from independent sourees or physical
evidence. In the present case nevertheless, the CTM propriator submitted one flyer
only (advertising a party in March 2005) which cannot on its own serve as sufficient
proof to back up those claims .
Against this background it is concluded that the documents submitted by the CTM
proprietor to prove use of the contested CTM in Austria fail to support a conclusion of
the applicant's awareness of the use of the mark before December 2006 and
consequently of the use fora successive period of five years .
The above conclusion is not challenged by the CTM proprietor's arguments that Red
Bull became aware of the existence of the contested CTM in 2000 and started, from
2001 , the acquiescence of the use and existence of the 'Fiügel' marks, including the
contested CTM. lt is true that in the sixth paragraph of the writ of summons submitted
in the 2000/2001 proceedings in the Netherlands it is mentioned that the claimani is in
possession of a large number of foreign trade mark registrations for the [ ...] Flügel
word mark, including a European trade mark registration. Furthermore, the proceedings
before the German Patent Office (finalised in 2003) against Red Bull's German
registration tor ' .. .Verleiht Flügel' we re based, inter al ia, on the contested CTM. In order
for an acquiescence claim to be successful, the CTM propriator must adduce evidence
that the applicant was aware (or should have been aware) of the use (emphasis added)
of the contested CTM for a period of five successive years and remained inactive.
While it cannot be denied that as it is apparent from the Dutch and German
proceedings, Red Bull was aware of the existence of the contasled CTM, the fact
remains that the CTM propriator failed to prove that Red Bull was also aware (or should
have been) of the use of the contested CTM in Austria befare 05/12/2006 and
knowingly toleraled such use for more than five successive years.
Therefore, the CTM proprietor's claims as to the inadmissibility of the application on
account of the applicant's acquiescence must be rejected.
OAMI +34 965131344
2/12/2014 15:20 : 33
Decision on Cancellation No 6090 C
PAGE
13/028
OCHWP- FAX001
page: 12 of 27
REPUTATION - ARTICLE 53(1)(a) CTMR IN CONJUNCTION WITH ARTICLE 8(5)
CTMR
Preliminary remark
The application for a deelaratien of invalidity is based on more than one earlier mark
and on the grounds of Artiele 53(1)(a) CTMR in conneetion with Artiele 8(1)(b) and
Artiele 8(5) CTMR . For reasans of procedural economy, the Cancellation Division will
first examine the application in relation to aarlier Austrian trade mark registration
No 175 793 '... VERLEIHT FLÜGEL', for which the applicant claimed repute in Austria
and in relation to the grounds of Artiele 53(1)(a) CTMR i_
n conjunction withArtiele 8(5)
CTMR.
According to Artiele 53(1 )(a) CTMR in conjunction with Artiele 8(5) CTMR, a
Community trade mark shall be declared invalid on application to the Office or on the
basis of a counterclaim in infringement proceedings, where there is an earlier mark as
referred to in Artiele 8(2) CTMR and the conditions set out in paragraph 5 of that Artiele
are fulfilled (that is, where the contested trade mark is identical with , or similar to, the
earlier trade mark and it is registered for goods or services which are not similar to
these tor which the earlier trade mark is registered, where, in the case of an earlier
Community trade mark, the trade mark has a reputation in the Community and, in the
case of an earlier national trade mark, the trade mark has a reputation in the Membar
State concemed and where the use without due cause of the contested trade mark
would take unfair advantage of, or be detrimental to, the distinctive character or the
repute of the earlier trade mark).
Therefore, the grounds of Artiele 8(5) CTMR are only applicable when the following
conditions are met.
•
The signs must be either identical or similar.
•
The earlier trade mark must have a reputation. As to relevant moment in time, it
has to be pointed out that an invalidity applicant must prove that its earlier right(s)
has/have acquired a reputation by the filling date of the contested CTM (taking
into account, where appropriate, any priority claimed) and also that earlier right(s)
continue(s) to enjoy reputation at the time the decision on invalidity is taken.
Moreover, reputation must exist in the territory concerned and for the goods
and/or services on which the application is based.
•
Encroachment upon reputation : the use of the contested trade mark would take
unfair advantage of, or be detrimental to, the distinctive character or the repute of
the aarlier trade mark.
The abovementioned requirements are cumulative and, therefore, the absence of any
one of them will lead to the rejection of the application tor a deelaratien of invalidity
under Artiele 53(1)(a) CTMR in conjunction with Artiele 8(5) CTMR (by analogy
judgment of 16/12/2010, joined cases T-345/08 and T-357/08, 'BOTOCYL',
paragraph 41). However, the tulfilment of all the abovementioned conditions may not
be sufficient. The application for a deelaratien of invalidity may still fail if the CTM
propriator establishes due cause for the use of the contested trade mark.
In the present case , as already shown above, the CTM propriator claims to have due
cause tor using the contested mark. This claim will need to be examined on ly if the
OAMI +34 965131344
2/12/2014 15:20 : 33
Decision on Cancellation No 6090
PAGE
14/028
c
OCHWP- FAK001
page: 13 of 27
three abovementioned conditions are met Uudgment of 22/03/2007, T-215/03, 'VIPS',
paragraph 60) . Therefore, the Cancellation Division will only deal with this issue, if still
necessary, at the end of the decision.
a)
The signs
... VERLEIHT FLÜGEL
-·--····· --
I
I
I
FLÜGEL
I
·--·-------------·---·-···--------- -···--j--·------- -----------·-·-------·--······----- -·-------- ---I
Earlier trade mark
II
Contested mark
The relevant territory is Austria.
Visually, the marks are similar to the extent that they coincide in the verbal element
'FLÜGEL'. However, they differ in the additional verbal element 'VERLEIHT' and the
three dots placed befare it, that are present only in the earlier mark.
Au rally, the pronunclation of the signs coincides in the sound of the letters composing the
word 'FLÜGEL' present identically in both signs, and to that extent the signs are aurally
similar. The pronunciation differs in the sound of the letters 'VERLEIHT' of the earlier
mark which have no counterparts in the contested mark. In the apinion of the Cancellation
Division it is reasanabie to assume that the three dots placed befare the word 'VERLEIHT'
in the earlier mark will not be referred to aurally by the relevant public and as such they
are not subject to a phonetic assessment and have no impact on the aural comparison of
the signs.
Conceptually, in German the earliermark means '... gives (you) wings'. The public in the
relevant territery will perceive this expression as a metaphor referring te sernething meant
te inspire or metivate semeene te 'fly' or to achieve great things. The centested sign is
also composed of a German word, which refers, ameng ethers, te 'wing(s)' (either of the
modified forelimbs of a bird, covered with large .feathers and specialised for flight in most
species) . The signs are therefere conceptually similar te the extent where they
communieale the concept of the noun 'wings'.
Taking into account the abovementioned visual, aural and conceptual coincidences, it
is considered that the signs under comparison are similar.
b)
Reputation of the earlier trade mark
Accord ing to the applicant, the earlier trade mark has a reputation in Austria.
Reputatien implies a knewledge threshold which is reached only when the earlier mark
is known by a significant part of the relevant public for the goods or services it covers.
The relevant public is, depending on the goods or services marketed, either the public
at large or a more specialised public.
In the present case the contested trade mark was filed on 24/09/1997. Therefore. the
applicant was required to prove that the trade mark on which the application for a
deelaratien of invalidity is, inter alia, based had acquired a reputation in Austria prior to
OAMI +34 965131344
2/12/2014 15 : 20:33
Decision on Cancellation No 6090 C
PAGE
15/028
OCHWP-FAX001
page: 14 of 27
that date and that it continues to enjoy a reputation at the time the decision on invalidity
is taken . lndeed, the requ irements of Artiele 53(1)(a) CTMR that there is an earlier
mark [... ] and that the conditions set out in paragraph 5 of Artiele 8(5) CTMR ~
tultilled (emphasis added) have to be interpreled in the sense that reputation of the
earlier mark(s) must also exist by the time of filing the request for invalidity and subsist
by the date when the decision is taken . This is because in invalidity proceedings the
time span between the filing date of the contested CTM and the invalidity decision can
be considerable and it cannot be normally presumed, in the absence of evidence that
reputation subsists . Moreover, the evidence must also show that the reputation was
acquired for the goeds for wh ich the applicant has claimed reputation, namely:
Class 32 : Energy drinks.
In this regard the Cancellation Division notes from the outset that in the application for
a deelaratien of invalidity, the applicant claimed reputation for non-aleoho/ie drinks,
goeds for which this earlier mark was, among ethers, registered at the time of filing the
application. However, taking into account that following the decision of 05/03/2013 of
the Austrian Patent Office the earlier mark concemed remained only registered tor
energy drinks in Class 32 and that in tact these goods are part of the braad category of
non-aleoho/ie drinks for which reputation was initially claimed, the Cancellation Division
will consider the claim of the applicant to be restricted to energy drinks in Class 32 and
will therefore continue the examinatien of the present application on the basis of these
goeds only.
In order to delermine the mark's level of reputation, all the relevant facts of the case
must be taken into consideration, including, in particular, the market share held by the
trade mark, the intensity, geographical extent and duration of its use, and the size of
the investment made by the undertaking in promoting it.
On 12/12/2011, the applicant submilled evidence aimed at demonstraling the
reputation of the earlier mark on which the application is, inter alia, based and its
claims under Artiele 8(5) CTMR. The Cancellation Division notes that the evidence was
provided in a structured manner and will refer to the documents submitted by using the
original inventory numbers used in the applicant's observations and on the documents
themselves. Furthermore, as the applicant requested to keep certain commercial data
contained in the evidence confidential vis-a-vis third parties , the Cancellation Division
will describe that part of the evidence only in the most general terms without divulging
any such data.
The evidence therefore camprises the following :
•
Enelosure 2: The study 'Fiügel association' carried out by Karmasin
Motivforschung between 20/10/2010 and 03/11/2010 (document in German and
partial English translation). The aim of the study was to examine whether a
(foreign) beverage with the name 'Fiügel' is associated in Austria with Red Buil.
The study was conducted by means of personal interviews on a sample of
1 000 people, aged 14 and over, representative for Austria as part of an
omnibus survey. The conclusions of the study wer~~g~r at 39% of the energy
) with a certain
drink consumers associate the product 'Fiügel' (
beverage/trade mark/company, that the associations relate almast exclusively
with Red Buil (85% of the total interviewed, 80% of the people aged between
OAMI +34 965131344
2/12/2014 15 : 20 : 33
Decision on Cancellation No 6090
c
PAGE
16/028
OCHWP- FAX001
page: 15 of 27
14-36 and 88% of the energy drink consumers) and that in the aided demand,
63% of the total interviawed and respectively 78% of lhe energy drinks
eensurners associate 'Fiügel' with Red Bull.
•
Enelosure 3: Affidavit given on 09/1 0/2009 by Dr. Volker Viechlbauer, acting as
the General Counsel of Red Bull GmbH (18 pages in English). The affidavit is
accompanied by eight exhibits, as fellows : exhibit .1/First shipment of Red Buil
energy drink to distribution countries, exhibit .2/a DVD containing Red Bull
commercials that have been aired in the Europaan Union, on TV, radio and
cinema, exhibit .3/Promotional material used tor several countries in the
Europaan Union (including Austria), axhibit .4/Weightad distribution and market
share reports for the Red Bull marks in several countries of the Europaan Union
(including Austria) , exhibit .5/Trial and awareness studies for several countries
of the Europaan Union (including Auslria), exhibit .6/Well-known decisions list,
exhibit .7/Printouts from the current international Red Bull website (12 pages)
and exhibit .8/a DVD containing a video-clip on Red Bull's actlvities trom
internet presence to worldwide sponsored events and athletes.
Essentially, the affidavit and exhibits provide information on the following:
- The history and global launch of the trade marks Red Bull and 'Gives you
wings'. In particular, it is mentioned that the Red Bull energy drink with the
prominent selling line 'Gives you wings' was first launched in 1987 in Austria ;
currently the trade mark 'Gives you wings' is registered in 185 different
countries throughout the world and Red Buil owns national reg istrations tor the
equivalent to 'Gives you wings' in the national language in all European Union
Member States. Exhibit 1 contains a table showing the date of the first shipment
of Red Bull Energy Drink in various countries (22/05/1987 tor Austria).
- The use and promotion of the Red Bull marks. lnformation is provided on the
unitsales (for Austria the document shows an impressive number of unit sales),
media expenses (for Austria trom saveral hundred thousands of Euros at the
beginning of 1987, to over one million and a half Euros in 2008, marketing
expenses (the numbers tor Austria are very high, over several millions Euros
trom 2003 to 2008) and brand value (in September 2008, Red Bull ranked 22 of
the 50 most valuable brand corporations in Europe and 12 of the 25 most
valuable single brands in Europe, according to the Europaan Brand Ranking
published by 'Eurobrand 2008'; in May 2009, Red Bull was ranked number 79
according to the BrandZ top 100 ranking, an authoritative ranking report from
MillwardBrown on the most valuable brands in the world; in relation to soft
drinks, Red Bull ranked as the fourth most valuable brand worldwide according
to BrandZ). Exhibit 2 contains a DVD showing Red Bull commercials aired in
the European Union, on TV. radio and cinema. In each commercial the slogan
'Gives you wings' appears and/or is heard in association with the Red Bull
energy drink. Lists with Red Bull commercials in several countries are also
provided (87 commercials for Austria}. Exhibit 3 shows promotional materials
(pictures of flyers, SBM door-hangers, bookmarks, sales folders, consumer
information leaflets, retail displays etc.) tor various countries displaying the
marks Red Bull and 'Gives you wings'/the equivalent in the official language of
the country concemed. For Austria they are dated between 2003 and 2008.
- The national and international events sponsored and/or organised by Red Bull.
The evidence mentions that Red Bull is well-known for sponsoring and
organising events all over the world, many of which directly relale to the idea
OAMI +34 965131344
2/12/2014 15 : 20 : 33
Decision on Cancellation No 6090
c
PAGE
17/028
OCHWP- FAX001
page: 16 of 27
that 'Red Bull gives you wings'. lt is further mentioned that 'whatever Red Bull
does, il always expressed its positioning GIVES YOU WINGS'. Detailed
information is provided on saveral such events, inter alia, 'Formula One'
(according to IFM TV Media Research which focuses on the Formula One 2008
Season, the worldwide TV audience was more than 14,4 million}, 'NASCAR'
(the most popular car racing circuit in the United States, 'X-Fighters' {a freestyle
motocross contest between 10 riders, where each participant perfarms the
riskiest and most spectacular jumps), 'Fiugtag' (literally 'Fiight Day' , where
competitors attempt to fly in homemade flying machines; the first Red Bull
Flugtag event look place in Vienna, Austria in September 1992 attracting
approximately 25 000 spectators; tor the 2008 event held in Vienna there were
approximately 100 000 spectators; the evidence states that 'the right mixture of
competition, fun and creativity shows that Red Bull vitalises the body and mind
and gives all partleipants wiiings! '). A table with the athletas sponsored by Red
Bull is also provided (showing the country, athlete name, sport and the year
since when it was sponsored) .
- The market knowledge of Red Bull. The evidence provides detailed
information on the weighted distribution {the percentage of energy drink
business accounted for by stores offering Red Bull in relation to the energy
drink businesses offering energy drinks in general) and market share for saveral
countries of the Europaan Union as well as the trial and awareness studies
(spontaneous and aided) carried out by different leading institutions (such as
Fessei-GfK, Nielsen, Taylor Nelson Sofres and Wings). More speclfically, for
Austria the affidavit shows a weighted distri bution of 100% and a market share
(value) of 81 .3% in 2008 with a growth rate value of 6.8% as compared to the
year befare . The aided awareness for Austria in 2008 was of 100% whilst
spontaneous awareness was 98%. Exhibit 4 contains reports for several
countries of the Europaan Union showing the market share volume, the growth
rate andlor the distribution weighted (for Austria the reports are dated between
2003 and 2008). Exhibit 5 consists of Red Bull Trial and Awareness studies for
saveral countries of the Europaan Union showing the aided and spontaneous
awareness (for Austria, the studies are provided for the years 2003, 2004, 2005,
2006 , 2007 and 2008). As regards 'GIVES YOU WINGS' the Affidavit stales in
particular that it has also achieved great success in the energy drink market
place and is also well-known in that market sector EU wide. Raferenee is made
to the 1997 Fessei-GfK market study carried out in Austria as wellastoa 1998
GfK market study carried out in Germany in relation to 'GIVES YOU WINGS'.
- Additionally, it is further cfaimed in the Affidavit that the Red Bull brand and
trade marks including RED and GIVES YOU WINGS are fameus and this has
been confirmed by various Courts and Trade mark Offices in Europe and the
world. A tabfe containing details of such decisions and judgments issued
between 1998 and 2009 is attached as Exhibit 6. As regards 'GIVES YOU
WINGS' in Austria, the evidence refers toa decision taken on 27/11/2003, by
the Regional Court of Appeal Vienna in an interim injunction proceeding ,
whereby the Court found that as the slogan is supremely known, the plaintiff
has attained vested rights worth protection.
•
Enelosure 4: The report 'Red Bun Basic Survey for Evidence of Market
Contention ' ... VERLEIHT FLÜGEL' and 'energy drink", conducted by FESSELGfK lnstitut für Marktforschung Ges.m.b.H, between October 08 and November
05, 1997 (document in German and partial English translation). The survey was
carried out orally, throughout Austria (Vienna, Lower and Upper Austria, Styria,
OAMI +34 965131344
2/12/2014 15:20:33
Decision on Cancellation No 6090 C
PAGE
18/028
OCHWP-FAX001
page: 17 of 27
Tyrol), within the framewerk of a multi-topic survey in accordance with the
international codex on practical marketing and society research prepared by
IHKISOMAR. The table basis was of 1 000 and a number of 981 interviews
were carried out on persons aged 15 and over. The evidence shows, among
ethers , that: (i) 79% of all the interviawed persons have seen/heard the
expression ' ... VERLEIHT FLÜGEL', (ii) of a total basis of 788 interviawed
persons 86% spontaneously associated this expression with Red Bull in reply to
the question 'Which trade marklmanufacturer uses this expression'
(spontaneous) and (iii) a total of 66% have seen/heard the expression one year
ago or more.
•
Enelosure 5: The study 'Reputation/Secondary meaning ... VERLEIHT FLÜGEL',
conducted by Karmasin Motivforschung between 06/10/2010 and 20/10/2010
(document in German and partial English translation). The aim of the study was
to delermine the awareness and distinctiveness of the slogan ' ... VERLEIHT
FLÜGEL'. lt was carried out in Austria by means of personal interviews on a
sample of 1 000 persons, aged 14 and over. The evidence shows that 82% of
all interviawed persons and 98% of energy drin-ks consumers know the
statement' ... VERLEIHT FLÜGEL' in conneetion with energy drinks, that 77% of
all interviawed persons and 95% of energy drinks eensurners think about a
company when they hear or see this expression and when they refer to a
company they always refer to Red Bull (98% of all the interviewed persons and
100% of the energy drink consumers). The conclusion of the study was that the
reputation for ' ... VERLEl HT FLÜGEL' could clearly be demonstraled by the
results.
Befare proceedings to the analysis of the evidence it is necessary to consider the CTM
proprietor's arguments as regards the fact that the earlier mark is nat valid and that it
does nat have a reputation in the relevant territory.
In particular, the CTM propriator argues that the aarlier mark was never used as a
trade mark but in a descriptive way, indicating that the product Red Bull gives the
customers a feeling of being able to fly and therefore as an advertisement of the
abilities of the product and not to indicate the origin. Moreover, it shows that the slogan
' ... VERLEIHT FLÜGEL' was never used alone, but always in combination with Red Bull .
Furthermore, it claims that the evidence does nat demonstrate the reputation of the
mark ' .. . VERLEIHT FLÜGEL' since the surveys conducted in 1997 and 2010 are
flawed and should bath be dismissed as proef of the applicant's claims. Specificafly,
the CTM propriator questions the methad used in carrying out the 1997 survey
because question two of the survey asks the respondents to name a mark or a
manutacturer who uses the slogan and in this way the respondent gets much guidance
to give the desired answer and question three links the question to energy drinks.
Along similar lines of reasoning, the CTM proprietor argues that for the 2010 survey the
respondents got too much help connecting Red Bull to the slogan because in the first
question the inteNiewer links the slogan immediately to energy drinks and since Red
Bull is the most famous trada mark for enargy drinks in Austria respondants wil/ of
course immediately name Red Bull in any inteNiew regafding energy drinks regard/ess
what the question exactly is. lt also refers to the judgment of 12/07/2006, T-277/04,
'Vitakraft' where the Court stated that if a respondent gets toa much help with naming a
specific trade markor company, the market survey should be dismissed as proef.
OAMI +34 965131344
2/12/2014 15 : 20 : 33
Decision on Cancellation No 6090 C
PAGE
19/028
OCHWP- FAXOOl
page: 18 of 27
In the first place, it must be recalled that an advertising slogan is deemed to be
distinctive if apart from its promotional function the public perceives it as an indication
of the commercial crigin of the goeds or services in question. This is the case for
example when it is seen as more than a mere advertising message extolling the
qualities of the goeds or services in question because it introduces elements of
conceptual intrigue or surprise, so that it may be perceived as imaginative, surprising or
unexpected or has some partieular originality or resonanee. lt is the apinion of the
Cancellation Division that the foregoing apply as regards the aarlier mark •... VERLEIHT
FLÜGEL'. The expression does not provide direct and immediate information a bout the
goods in question and/or their eharaeteristics and it is nat eommonly used in trade in
relation to the goods at issue. Furthermore, it should be reiteraled that ·... VERLEIHT
FLÜGEL' is aregistered trade markandit should always be considered to have at least
a minimum dagree of inherent distinctiveness. lndeed, earlier marks, whether CTMs or
national marks, enjoy a 'presumption of validity', which the Office is not empowered to
overturn. The Court has made it clear (see judgment of 24/05/2012 , C-196/11, 'F1LIVE', paragraphs 40-41) , that 'in proceedings opposing the registration of a
Community trade mark, the validity of national trade marks may nat be called into
question' (applicable by analogy to CTM's) . The Court added that 'it should be noted
that the characterisation of a sign as descriptive or generic is equivalent to denying its
distinctive character'.
For the sake of completeness, it should also be pointed out that the applicant referred
to a decision taken on 05/03/2013 by the lnvalidity Division of the Austrian Patent
Office in the cancellation proceedings against, inter alia, the aarlier mark concerned
and that the Austrian Patent Office stated that Austrian and European /aw confirms that
advertising slogans are registrable as a trade mark. Accordingly, this is not impaired by
the fact that trade marks contained a message. The Jaw stafes that slogans can
constitute a distinguishing mark, provided they do not only consist of a conventional
advertising message, but are original and distinctive, require a minimum amount of
interpretation or give the relevant pubtic cause tor thought. lf a successtuf slogan, like
this one, is perceived as a trade mark by more than 90% of the relevant pub/ie, it
seems absurd to deny that it has the aforementioned qua/ities. The applicant's apinion
that advertising slogans are not used as a distinguishing mark in principle is in
contradiefion to the c/ear /ega/ situation. [ .. ] The component/slogan '... VERLEIHT
FLOGEL' is distinctive in itself and is not understood as a 'promotional indication of the
product's effect'. Rather, the target groups concemed immediate/y associate the slogan
with Red Bu/1 energy drinks, even without the worels Red Bul/ added to it [ .. ] . This
shows that, even in its modified form and without the words Red Bul/, the slogan serves
to identify the goods as originating from a particu/ar company. Therefore, in the
absence of any persuasive evidence adduced by the CTM propriator to challenge this
presumption, the earlier mark is presumed to have at least a minimum degree of
inherent distinctiveness.
In the second place, it follows from case law that the distinctive character of a mark
referred to in Artiele 3(3) of First Council Directive 89/1 04/EEC may be acquired in
consequence of the use of that mark as part of or in conjunction with a registered trade
mark (see judgment of 07/07/2005, C-353/03 , 'Have a Break').
Finafly, as regards the surveys , the Cancellation Division would like to point out that, as
demonstrated by the documents themselves, they originate from independent and
recognised sourees (Fessei-GfK, Karmasin). The interviews ware carried out of sample
of 1000 interviawees (which is in principle sufficient) and the methad under which the
surveys were carried out and the complete list of questions were also provided
(including in what order the questions were formulated) . As regards the 1997 survey,
OAMI +34 965131344
2/12/2014 15:20 : 33
Decisio n on Cancellation No 6090 C
PAGE
20/028
OCHWP- FAX001
page: 19 of 27
the Cancellation Division cannot share the view of the CTM propriator that asking the
respondents to name a trade mark or a manufacturer which uses the expression
'... verleiht flügel' actually prompted the respondents to obtain the 'desired answer'. As
shown by the evidence, question two of the survey was in facta spontaneous question,
(aimed at trying to delermine which brands are the most salient in the respondents'
minds) and not a leading question. lndeed, the interviewers were not asked if the
slogan '... verleiht flüge/' reminds them of Red Bul/, but if they can name the trade mark
or undertaking that uses the expression. Similarly, it is considered that indicating in the
beginning of the 2010 survey, the field of energy drinks (for which reputation is actually
claimed) cannot be deemed to undermine the probative value of the results of the
survey as a whole. Therefore, the Cancellation Division considers the probative value
of the studies submitted by the applicant not to be under dispute.
Therefore, these claims of the CTM propriator have to be set aside as unfounded.
Assessment ofthe evidence
Having evaluated all the documents listed above, the Cancellation Division concludes
that the earlier trade mark has a reputation in Austria for energy drinks.
The abovementioned evidence indicates that the aarlier trade mark has been used tor
a substantial period of time and it is generally known to a significant part of the Austrian
public in the relevant market in conneetion with energy drinks , as it has been attested
by independent sources, in particular the FESSEL-GfK and Karmasin market studies.
As demonstrated by the 1997 survey, the mark '.. . VERLEHIT FLÜGEL' was known to
79% of the respondents and a total of 66% have seenlheard the expression one year
before. Moreover, a total of 86% spontaneously associated the slogan with the
applicant. lt is therefore considered that under such recognition numbers, this
document, albeit with not much support from other evidence, serves to conclude that
the aarlier mark already enjoyed a degree of recognition among the relevant public by
the filing of the contested CTM . Additionally, the 2010 survey (which shows, among
others, that 98% of all the interviawed persons and 100% of the energy drinks
consumers always refer to Red Bull when hearing or seeing the slogan' ... VERLEHIT
FLÜGEL') supported by the sales figures and marketing efforts show that the trade
mark has a consolidated position in the market Moreover, the applicant refers to a
decision of 27/11/2003 of the Regional Court of Appeal of Vienna which confirms the
well-known character of the slogan ' ... VERLEHIT FLÜGEL'. Although national
decisions are not binding for the Office, still they are admissible means of evidence and
may have evidentiary value, especially if they originate from the Membar State the
territory of which is also relevant for the proceedings at hand. In the present case, it is
considered that the decision serves as an indication of the reputation of the earlier
mark and the evidence submitted by the applicant also services to support the findings
of that decision. Under these circumstances, the Cancellation Division finds that, taken
as a whole, the evidence indicates that the aarlier trade mark enjoys a certain degree
of recognition among the relevant public, which leads to the conclusion that the aarlier
trade mark enjoys a reputation. Whether the dagree of recognition is sufficient for
Artiele 8(5) CTMR to be applicable depends on other factors relevant under Artiele 8(5)
CTMR such as, for example, the dagree of similarity between the signs, the inherent
characteristics of the aarlier trade mark, the type of goods and services in question, the
relevant consumers, etc.
OAMI +34 965131344
2/12/2014 15:20:33
PAGE
21/028
Decisio n on Cancellation No 6090 C
c)
OCHWP-FAX001
page : 20 of 27
The 'link' between the signs
As seen above, the aarlier mark is reputed and the signs are similar. In order to
establish that a later trade mark will encroach upon the reputation of an ear1ier mark, it
is necessary to demonstrata that, given all the relevant factors, the relevant public will
establish a link (or association) between the signs. The necessity of such a 'link'
between the conflicting marks in consumers' minds is nat explicitly mentioned in
Artiele 8(5) CTMR but has been confirmed in the judgment of 23/10/2003, C-408/01,
'Adidas', paragraphs 29 and 31 and the judgment of 27/11/2008, C-252/07, 'lntel
Corporation', paragraph 66. lt is not an additional requirement but merely reflects the
need to determine, after all the factors relevant to the particular case have been
assessed, whether the association that the public might establish between the signs is
such that either detriment or unfair advantage is likely to occur.
Possible relevant factors for the examinatien of a 'link' include Qudgment of 27/11/2008,
C-252/07, 'lntel Corporation', paragraph 42):
•
the degree of similarity between the signs;
•
the nature of the goods and services, including the degree of similarity or
dissimilarity between these goeds or services, and the relevant public;
•
the strength of the ear1ier mark's reputation;
•
the degree of the aarlier mark's distinctive character, whether inherent or
acquired through use;
•
the existence of likelihoed of confusion on the part of the public.
This list is not exhaustive and ether criteria may be relevant depending on the particular
circumstances. Moreover, the existence of a 'link' may be established on the basis of
only some of these criteria.
In the present case, the signs have been found to be similar to the extent that they
have the word 'FLÜGEL' in common, which represents the contested mark in its
entirety and the secend verbal element of the aarlier mark. While it is true that the
aarlier mark includes the additional verbal element 'VERLEIHT' and the three dots
placed befare it, in the apinion of the Cancellation Division these elements will not have
such a significant impact on consumers that their attention be detracted trom the
shared element 'FLÜGEL'. In this regard, it must be remembered that the degree of
similarity of the signs required under Artiele 8(5) CTMR differs trom that required under
Artiele 8(1)(b) CTMR. Thus, whereas the proteetion provided for under
Artiele 8(1)(b) CTMR is conditional upon a finding of a degree of similarity between the
marks at issue such that there is a likelihoed of confusion between them on the part of
the relevant sectien of the public, the existence of such a likelihoed is nol necessary for
the proteetion conferred by Artiele 8(5) CTMR. Accordingly, the types of injury referred
to in Artiele 8(5) CTMR may result from a lessar degree of similarity between the marks
in question , provided that it is sufficient fortherelevant sectien of the public to make a
conneetion between those marks, that is to say, to establish a link between them (see
judgment of 24/03/2011, C-552/09 P, TiMi KINDERJOGHURT, paragraph 53 and the
case-law cited therein).
As regards the goods, first it must be specified that the application tor a deelsration of
invalidity is directed against the following goods:
OAMI +34 965131344
2/12/2014 15 : 20 : 33
Decision on Cancellation No 6090 C
PAGE
22/028
OCHWP-FAX001
page: 21 of 27
Class 32:
Beers; mineral and aerated waters and other non-a/coho/ie drinks; fruit
drinks and fruit juices; syrups and other preparations for the preparation
ofdrinks.
Class 33 :
Aleoho/ie drinks (except from beers).
The contested CTM is registered for the entire class headings of Classes 32 and 33 of
the Nice Classification. lt was filed on 24/09/1997. The English translation reads
however as above and includes all the general indications in this class with the
exception of the term 'beverages', which was replaced by 'drinks' . Considering that
'drinks' should be the equivalent of the original Dutch term 'dranken ' which means
'beverages', the Cancellation Division will interpret the English the list of goods in
Classes 32 and 33 as covering the entire class headings of these classes, despita the
slight lexica! modification . According to Communication No 2/12 of the President of the
Office of 20/06/2012, as regards Community trade mark applications filed befare
21/06/2012 , the Office considers that the intention of the applicant was to cover all the
goods or services included in the alphabetical list of the classes concemed in the
edition of the Nice Classification in force at the time when the filing was made, in this
case the seventh edition .
Consequently, in order to take account of the entire alphabetical lists in Classes 32 and
33 of the contested CTM, the Cancellation Division will analyse the goods of the earlier
marks for which a reputation has been found with both (i) the general indications
specified and (ii) any items in the alphabeticallists that do not fall within the natura! and
usual meaning of these general indications.
In the case of Class 32 , the Cancellation Division has not identified any items in the
alphabetical list covered by the contested CTM that fall outside of the natura! and usual
meaning of the general indications of the class heading.
Therefore, as regards this class, only the general indications will be analysed.
However, in the case of Class 33, the Cancellation Division has identified the following
items in the alphabetical list covered by the contested CTM that do not fall within the
natura! and usual meaning of these general indications:
Class 33 :
Aleoho/ie essences; aleoho/ie extracts; fruit extracts [alcoholic].
Therefore, as regards this class, both the general indications specified and the items
listed above wiJl be analysed.
The contested goods cover essentially non-alcoholic and alcoholic beverages as well
as preparations for making alcoholic beverages, which are all connected to the reputed
energy drinks to some extent. lndeed, such a conneetion is obvious as regards the
contested other non-aleoho/ie drinks in Class 32, which include as a braad category the
earlier reputed energy drinks. The contested mineral and aerated waters, fruit drinks
and fruit juices in the same class are goods which have the same nature as the earlier
ones, namely non-alcoholic beverages. Along similar lines of reasoning , the same
applies to the contested syrups and other preparations for the preparatien of drinks in
Class 32 which are used to prepare non-alcoholic drinks ready for consumption.
Turning to the remain ing contested beers in Class 32, although they may not appear to
be immediately linked to the earlier reputed goods, still a certain conneetion cannot be
denied. These goods are in competition since consumers could choose between an
OAMI +34 965131344
2/12/2014 15:20:33
PAGE
23/028
Decision on Cancellation No 6090 C
OCHWP- FAX001
page: 22 of 27
energy drink ar a beer to quench their thirst, may be served in the sameestablishment
and are generally sold side by side in grocery stores and the like. Tuming finally to the
contested goods in Class 33, it is considered that they also present certain conneetion
with the aarlier goods for which a reputation has been established. lt is camman
knowledge that aleoho/ie drinks are aften mixed with energy drinks and/or consumed
together. For example a popular alcoholic beverage in bars and night clubs around the
world is Voddy Red ar Vod-8omb which consists of a mixture of the applicant's energy
drink and various amounts of vodka. The same considerations are valid as regards the
remaining contested aleoho/ie essences; aleoho/ie extracts; fruit extracts (a/coho/ic}
which are preparations for making alcoholic beverages and can also be used as mixer
tagether with the applicant's energy drink in obtaining a drink.
As regards the distinctiveness of the earlier mark, and as already explained
hereinabove. it is considered that ' .. . VERLEIHT FLÜGEL' enjoys at least a minimum
degree of inherent distinctiveness for the goods at hand. In addition, as already shown
above, the aarlier mark has been found to enjoy a reputation in the Europaan Union in
conneetion with energy drinks.
Therefore, taking into account and weighing up all the relevant factors of the present
case, the Cancellation Division concludes that when encountering the contested mark
the relevant consumers will be likely to associate it with the earlier sign, that is to say,
establish a mental 'link' between the signs. However, although a 'link' between the
signs is a necessary condition for further assessing whether detriment ar unfair
advantage are likely, the existence of such a link is nat sufficient, in itself, fora finding
that there may be one of the farms of damage referred to in Artiele 8(5) CTMR
Uudgment of 26/09/2012 , T-301/09, 'CITIGATE', paragraph 96).
d)
Encroachment upon reputation
Use of the contested mark wil! fall under Artiele 8(5) CTMR when any of the following
situations arise:
•
it takes unfair advantage of the distinctive character or the repute of the earlier
mark;
•
it is detrimental to the repute of the aarlier mark;
•
it is detrimental to the distinctive character of the aarlier mark.
Although in invalidity proceedings, detriment ar unfair advantage may be only potential ,
a mere possibility is nat sufficient for Artiele 8(5) CTMR to be applicable. While the
propriator of the earlier mark is not required to demonstrata actual and present harm to
its mark, it must however 'adduce prima facie evidence of a future risk, which is nat
hypothetical, of unfair advantage or detriment' Uudgment of 06/06/2012, T-60/10
'ROYAL SHAKESPEARE', paragraph 53) .
lt follows that the applicant must establish that detriment ar unfair advantage is
probable, in the sense that it is foreseeable in the ordinary course of events. For that
purpose, the applicant should file evidence or at least put forward a coherent line of
argumen~ showing what the detriment or unfair advantage would consist of and how it
would occur, which could lead to the prima facie conclusion that such an event is
indeed likely in the ordinary course of events.
OAMI +34 965131344
2/12/2014 15:20 : 33
PAGE
24/028
Decision on Cancellation No 6090 C
OCHWP-FAX001
page: 23 of 27
In the present case the applicant essentially claims the following :
(1) The earliermark '... VERLEIHT FLOGEL' enjoys a reputation in the European
Union and in particu/ar in the relevant territory Austria;
(2) The use of the very simi/ar contested mark in relation to identical or highly
simi/ar goods would lead fo a misappropriation of fhe applicant's mark goodwill,
acquired through years of brand promotion including heavy advertising and
through consistent quality and innovation over so many years; there is an
advantage if the reputation of the aarlier mark could be used as a vehicle for
facilitating the safe of the latter goeds;
(3) As a result of its reputation, the earfier mark is highly distinctive and this
singularity wou/d greatly suffer if the contested mark would be used on the
Austrian markef. The reputation of the earlier mark and the exclusivity and
immediate association triggered by it in the eensurner's mind wil/ suffer
independently of the life situation in which the consumer encounters a junior,
a/most identical, trade mark.
In ether words, the applicant claims that the use of the contested trade mark would
take unfair advantage of the distinctive character or the repute of the earlier trade mark
and be detrimentalto the distinctive character of the earfier trade mark.
Befare examining the applicant's claims, it is appropriate to reeall that the application
fora deelaratien of invalidity is directed against the following goeds:
Class 32:
Beers; mineral and aerated waters and other non-aleoho/ie drinks; fruit
drinks and fruit juices; syrups and other preparations for the preparatien
ofdrinks.
Class 33:
Aleohotic drinks (except trom beers); aleohotic essences; aleoho/ie
extracts; fruit extracts [alcoholic].
As seen above , the earlier trade mark was found to have a reputation for:
Class 32:
Energy drinks.
Unfair advantage {free-riding)
Unfair advantage in the context of Artiele 8(5) CTMR covers cases where there is clear
exploitation and 'free-riding on the coat-tails' of a fameus mark or an attempt to trade
upon its reputation. In ether words, there is a risk that the image of the mark with a
reputation or the characteristics which it projects are transferred to the goeds and
services covered by the contested trade mark. with the result that the marketing of
these goods and services is made easier by their association with the earfier mark with
a reputation üudgment of 06/06/2012, T-60/10 'ROYAL SHAKESPEARE',
paragraph 48; and judgment of 22/03/2007, T-215/03, 'VIPS' paragraph 40).
The applicant bases its claim on the following: (i) The earfier mark enjoys a high
reputation in the EU and in particu/ar in the relevant territory, Austria for goods in
Class 32; (ii) As the contested mark a/so covers goods in Classes 32 and 33, the mark
is intended to be used in relation to identical goods for which the earlier mark is
famous. The General Court in its decision of 19 May 2011, case T-580108 [Pepe
Jeans/PEPEQUILLO] took the view that a mark wi/1 /ikely take unfair advantage of the
OAMI +34 965131344
2/12/2014 15 : 20:33
PAGE
25/028
Decision on Cancellation No 6090 C
OCHWP-FAX001
page: 24 of 27
repute of the earfier mark if the contested mark is destined to be used on identica/
goods; (iii) /t is more likely thaf a consumer wou/d atfribute fhe goodwill acquired by fhe
app/icant through years of brand promotion including heavy advertising and through
consistent qua/ity and innovation over so many years to the goods oftered under the
conlesled mark, espeäa/ly since the latter is highly simi/ar to the earfier mark, on a
visua/, aura/ and conceptuallevel, (iv) Artiele 8(5) CTMR applies where an undertaking
makes its produels known by way of conveying the image of another mark to its own
mar/( or rather cliente/e, thereby taking advantage trom launching its products without
any recompense, of an image that the younger mark cannot a priori claim; in other
worris there is an advantage if the reputation of the first mark cou/d be used as a
vehicle tor facilitating the safe of the latter goods. In the case at hand, there is a
significant risk that consumers wil/ attribute the goodwill and reputation they associate
with '... VERLEIHT FLOGEL ' a/so ta the goeds affered under the contested mark,
which covers identica/ or high/y simi/ar beverages tor which the earfier mark enjoys a
reputation; (v) As a result, the marketing of these goods wil/ be made easier without
the proprietor of the contested mark having to undertake any own marketing efforts.
This 'boost', which wou/d be given to the contested mark as a resu/t of its being linked
in the minds of consumers to the applicant's famous ' ... VERLEIHT FLOGEL' mark
amounts to an unfair advantage and (iv) Furthermore, a great deal of the relevant
Austrian consumer is reminded of the applicant when seeing the CTM proprietor's
product and it is therefore apparent that the confesled mark would take advantage of
the earfier mark's reputation [sic].
According to the Court of Justice of the Europaan Union
. .. as regards injury consisting of unfair advantage taken of the distinctive
eh araeter or the repute of the earlier mark, in sa far as what is prohibited is
the drawing of benefit from that mark by the propriator of the later mark, the
existence of such injury must be assessed by raferenee to the average
eensurners of the goods or services for which the later mark is registered ,
who are reasonably well informed and reasonably observant and
circumspect.
(Judgment of 27/11/2008, C-252/07, 'lntel Corporation', paragraph 36.)
First, it has to be noted that all the eontested goods in the present case (namely beers;
mineral and aerated waters and ether non-aleohotic drinks; fruit drinks and fruit juices;
syrups and other preparations tor the preparatien of drinks in Class 32 and aleohotic
drinks (except trom beers); aleoho/ie essences; aleoho/ie extracts; fruit extracts
[alcoholic} in Class 33) are conneeled to the reputed energy drinks to some extent, as
explained in detail in sectien c) above.
Second, the evidenee adduced in the present case, shows that the applicant's earlier
mark enjoys a reputation in Austria in conneetion with energy drinks. Furthermore, the
applicant submitted a study (see above under Enelosure 2 'Fiügel association' carried
out in 2010 by Karmasin Motivforschung) which showed that 85% of the total
interviewed , 80% of the people aged between 14-36 and 88% of the energy drink
eensurners assoeiate the CTM proprietor's product 'Fiügel' with the applicant.
Bearing in mind the foregoing , it is considered that, in view of the special connections
between the earlier reputed goods and the contested ones, a substantial part of
eensurners may decide to turn to the CTM proprietor's goods in Classes 32 and 33 in
the belief that the contested sign is somehow linked to the applicant's reputed mark
' .. . VERLEIHT FLÜGEL', thus misappropriating its attractive powers and advertising
OAMI +34 965131344
2/12/2014 15:20 : 33
Decisio n on Cancellation No 6090 C
PAGE
26/028
OCHWP- FAX001
page: 25 of 27
value. This may stimulate the sales of the CTM proprietars products to an extent which
may be disproportionately high in camparisen with the size of its own promotional
investment and thus lead to the unacceptable situation where the propriator is allowed
to take a 'free-ride' on the investment of the applicant in promoting and building-up
good will for its mark.
Therefore, the Cancellation Division considers that, in view of the exposure of the
relevant consumers to the applicant's reputed aarlier mark, in relation to the goeds tor
which a reputation has been found and taking into account the similarity of the marks
and the inherent degree of distinctiveness of the earlier mark, there exists a high
probability that the use without due cause of lhe conlesled trade mark in respect of all
the contested goods in Classes 32 and 33 may lead to free-riding, that is to say, it
would take unfair advantage of the distinctive character or the repute of the earlier
trade mark.
Other forms of encroachment u pon reputation
The applicant also argues that use of the contested trade mark would be detrimental to
the distinctive character of the earlier trade mark.
As seen above, enemachment upon reputation is an essential condition tor Artiele 8(5)
CTMR to apply. Encroachment may take three different farms . For an application for a
deelaratien of invalidity to be well founded in this respect, it is sufficient if only one of
these farms is found to occur. In the present case, as seen above, the Cancellation
Division has already concluded that the contested trade mark would take unfair
advantage of the distinctive character or repute of the aarlier trade mark. lt fellows that
there is na need to examine whether ether farms also apply.
e)
Due Cause
As mentioned above, the CTM propriator claims to have due cause for using the
contested trade mark. lt argues that it created a separate position in the market of
aleoho/ie party drinks by app/ying a unique branding for its product, inc/uding the
characteristic fluorescent pink colour, the colours ye/low and black, the funny duck, the
red liquid of the product and the combination thereof (picture from its website
fluge l.com is attached, displaying a bottie of 'Fiügel' drink and the message 'Let the
Duck outl'). lt also mentions that it has put many marketing and advertisement efforts in
creating a unique position in the market of aleoho/ie party drinks.
The CTM proprietor's claim is nol well founded.
First of all, it must be noted that it is the CTM propristor that bears the burden of proof
to show that it has a due cause to use the mark in question, as the invalidity applicant
cannot be reasonably be expected to prove a negative fact (that no due cause exists).
In its judgment of 06/02/2014 (C-65/12 , 'Red Buil Krating-Daeng'/'The Bulldog'), the
Court clarified that Artiele 5(2) of First Council Directive 891104 must be interpreled as
meaning that the propriator of a trade mark with a reputation may be ob/iged, pursuant
to the concept of ,due causa ' within the meaning of that provision, to tolerate the use by
a third party of a sign simi/ar to that mark in relation to a product which is idenfical to
that for which that mark was registered, if it is demonstrated that that sign was being
used befare that mark was filed and that the use of that sign in relation to the identical
OAMI +34 965131344
2/12/2014 15 : 20:33
Decision on Cancellation No 6090 C
PAGE
27/028
OCHWP-FAX001
page: 26 of 27
product is in good faith. In order to determine whether that is so, the national court
must take account, in particu/ar, of: how that sign has been accepted by, and what its
reputation is with, the relevant pub/ie; the degree of proximity between the goods and
services for which that sign was original/y used and the product for which the mark with
a reputation was registered; and the economie and commercial significanee of the use
for that product of the sign which is simi/ar to that mark.
lt follows that there are certain conditions under which the prior use of a sign which is
similar to a trade rnark with a reputation may be covered by the concept of 'due cause'
and the condition of due cause is nat merely tultilled by the tact that tor example the
sign is particularly suitable tor identifying the products concemed (see, inter alia,
decision of 23/11/2010 , R 0240/2004-2 - WATERFORD (fig.)'). In ether words , the
mere use of the sign is not enough; what must be shown is a valid reasen justifying that
use .
In the present case, the Cancellation Division considers the statements of the CTM
propriator on the additiori of colours and of a 'funny duck' on the actual package of
CTM proprietars product and/or on promotional materials to be insufficient in serving
as a valid reason that cou ld justify the use of the contested mark tor the purpose of
Artiele 8(5) CTMR.
On the basis of the above, the Cancellation Division considers that the CTM propriator
did nat succeed in establishing due cause tor using the contested trade mark.
f)
Conclusion
Considering all the above, the application for a deelaratien of invalidity is well founded
under Artiele 53(1 )(a) CTMR in conjunction with Artiele 8(5) CTMR and therefore, the
contested CTM is declared entirely invalid.
Given that the application for a deelaratien of invalidity is entirely successful under
Artiele 53(1)(a) CTMR in conjunction with Artiele 8(5) CTMR it is not necessary to
exam ine the remaining earlier right on which the application was also based and the
other ground.
COSTS
According to Artiele 85(1) CTMR, the losing party in cancellation proceedings must
bear the fees and casts incurred by the other party.
Since the CTM propriator is the losing party, it must bear the cancellation fee as well as
the casts incurred by the applicant in the course of these proceedings.
According to Rule 94(3) and (6) and Rule 94(7)(d)(iii) CTMIR, the casts to be paid to
the applicant are the cancellation fee and the representation casts, which are to be
fixed on the basis of the maximum rate set therein.
OAMI +34 965131344
2/12/2014 15:20:33
PAGE
Decision on Cancellation No 6090 C
28/028
OCHWP- FAX001
page: 27 of 27
The Cancellation Dlvision
Vanessa PAGE
Oana-Aiina STURZA
Michaela SIMANDLOVA
According to Artiele 59CTMR, any party adversely affected by this decision has a right
to appeal against this decision. According to Article60 CTMR, notice of appeal must be
filed in writing at the Office within two months of the date of notification of this decision.
Furtherrnore, a written statement of the grounds of appeal must be filed within four
months of the same date. The notice of appeal will be deemed to be filed only when the
appeal tee of EUR 800 has been paid .
The amount determined in the fixatien of the costs may only be reviewed by a deelsion
of the Cancellation Division on request. According to Rule 94(4)CTMIR, such a request
must be filed within one month of the date of notification of this fixatien of costs and will
be deemed to be filed only when the review fee of EUR 100 has been paid (Article 2(30)
CTMFR).