In September 1997, International Licensing Services applied to register the word sign ‘Flügel’ for goods in classes 32 and 33 relating to alcoholic and non-alcoholic drinks.
The mark, which was registered in 1999, was transferred to Cyprus-based Asolo in 2006.
In 2011, Austria-based energy drink manufacturer Red Bull filed an application declaring the invalidity of the mark based on two of its earlier Austrian word marks: ‘Verleiht Flügel’ and ‘Red Bull Verleiht Flüüügel’. The two marks were registered in class 32 for energy drinks.
Flügel is the German word for wing.
The company also argued that Red Bull was aware of Asolo’s trademark in Austria. In addition, Asolo claimed that the board failed to take into account the fact that the drink protected by its trademark was available in 19 bars in Austria.
While the court said that the board was correct to uphold the Cancellation Division’s decision that Asolo did not provide sufficient evidence, the court nevertheless upheld Asolo’s argument that there was no likelihood of confusion between the marks and products.
According to Asolo, the board wrongly held that the alcoholic drinks in class 33 had a connection with energy drinks. The company also claimed that Red Bull denied any connection with alcoholic drinks.
Asolo said Red Bull “has always claimed that its product makes its consumers more energetic and alert, the opposite effect of consuming alcoholic drinks, so that a consumer wishing to remain alert, such as a driver, would not consider substituting an alcoholic drink for a non-alcoholic energy drink”.
In response, Red Bull said that the product covered by the contested mark “was developed as a mix of vodka and energy drink”.
In 2014, the EUIPO’s Cancellation Division accepted the request for invalidity on the ground that the public could link the marks at issue.
The EUIPO’s Fifth Board of Appeal dismissed an appeal from Asolo and upheld the board’s decision in 2016 because Asolo did not submit sufficient evidence and because the marks and goods at issue were similar.
Asolo argued before the EU General Court that the board was wrong to find that its evidence was inadmissible.
In addition, Red Bull claimed that mixing energy drinks and alcohol was a very common practice among young people in Austria and that the drinks covered by the marks at issue were “party drinks”.
The court stated that in the earlier decision, the board based its findings on the fact that energy drinks and alcoholic drinks are “often mixed and/or consumed together”.
However, the court said yesterday that just because the drinks can be consumed together, it is not sufficient to establish the existence of similarity between the products.
The court added that a large number of alcoholic and non-alcoholic drinks are often mixed and consumed. This would mean that a large list of products described as drinks would be categorised in the same group according to the board’s finding, said the court.
“Thus, it cannot be considered that an alcoholic drink and an energy drink are similar merely because they can be mixed, consumed or marketed together, given that the nature, intended purpose and use of those goods differ, based on the presence of, or absence of alcohol in their composition,” said the court.
The board’s decision was annulled and the EUIPO and Red Bull were ordered to pay their own costs, as well as those incurred by Asolo.
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