COURT OF JUSTICE OF THE EUROPEAN UNION – CASE C-65/12 – LEIDSEPLEIN BEHEER BV AND HENDRIKUS DE VRIES VERSUS RED BULL GMBH AND RED BULL NEDERLAND BV – JUDGMENT OF 6 FEBRUARY 2014
Red Bull, having noted that Mr de Vries produced and marketed energy drinks which used, in particular, the BULL DOG sign, seized the Rechtbank (district court) of Amsterdam requesting an order to cease this use which, in its opinion, adversely affected its renowned RED BULL KRATING-DAENG trade mark, registered with the Benelux office since 1983.
In his defence, Mr de Vries claimed that the use of his BULL DOG sign constituted a continuation of the use of the sign THE BULLDOG which had commenced prior to the registration of the RED BULL KRATING-DAENG trade mark, notably for the sale of drinks, and that this justified use of the sign.
The Court of Appeal of Amsterdam rejected Mr de Vries' argument, finding that the BULL DOG sign was similar to the RED BULL KRATING-DAENG trade mark and that Mr de Vries, by riding on the coat-tails of a renowned trade mark, had sought to take advantage of that trade mark’s reputation with a view to benefitting from Red Bull’s share of the energy drinks market, corresponding to a multimillion euro turnover.
It also held that that the fact that Mr de Vries had previously used the THE BULLDOG sign to sell drinks did not constitute grounds for allowing the use of this sign.
Seized with an appeal, the Supreme Court of the Netherlands expressed doubts as to the concept of "due cause" allowing the use of a sign identical or similar to a renowned trade mark and referred a preliminary question to the Court of Justice of the European Union (CJEU) to determine whether there can be "due cause" when a sign that is similar to a renowned trade mark is used by a third party for a product that is identical to the one for which the trade mark is registered and when it has been demonstrated that the sign was used before the trade mark was filed.
The CJEU answered that the proprietor of a renowned trade mark may be obliged, pursuant to the concept of "due cause", to tolerate the use by a third party of a sign similar to that trade mark in relation to a product which is identical to that for which the trade mark was registered, if it is demonstrated that that sign was being used before the trade mark was filed and that the sign is being used for the identical product in good faith. In order to determine whether that is so, the national court must take account, in particular, of:
- The presence and reputation of the sign at issue with respect to the relevant public;
- The degree of proximity between the products and services for which that sign was originally used and the product for which the renowned trade mark was registered; and
- The economic and commercial impact of the sign which is similar to the trade mark being used for the product in question.
This decision clarifies the notion of grounds of "due cause" in Article 5(2) of the First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks, which provides that "Any Member State may also provide that the proprietor shall be entitled to prevent all third parties not having his consent from using in the course of trade any sign which is identical with, or similar to, the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the latter has a reputation in the Member State and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.”
This decision raises questions, however, to the extent that it introduces a difference between well-known trade marks, whose proprietors must tolerate the use by a third party of a similar sign for a product that is identical to the one for which the trade mark was registered if the author of this use proves due cause (for example, use in good faith of a sign that precedes the registration of the renowned trade mark), and trade marks that are not well-known, whose proprietors may prohibit the use by a third party of a similar sign for an identical product, whether said use is in good faith or not.