UK:
Red Bull v Bullards: Balancing Brand Protection And Reputation
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Energy drink giant Red Bull recently received some negative
press for issuing a cease and desist letter to Norwich-based gin
maker Bullards for the use of the word ‘bull’ in its brand
name. The case is a useful reminder that brand owners should make
sure that their brand protection strategy reflects the
organisation’s wider brand values.
Background to the Red Bull and Bullards trade mark dispute
Following the revival of its brand, Bullards applied to the UK
Intellectual Property Office to register the brand name. Red Bull
opposed the registration, claiming that the mark ‘Bullards’
cannot be registered against certain categories of goods and
services as there is a likelihood that the two brands could be
confused by consumers.
Section 5(2) of the Trade Mark Act 1994 prevents registration of
a mark if it likely to cause confusion because it is:
- similar to an earlier trade mark; and
- is to be registered for goods or services identical with or
similar to those for which the earlier trade mark is
protected.
As well as formally opposing Bullards’ application for
registration, Red Bull issued Bullards with a letter demanding that
the gin maker remove a number of goods and services from its trade
mark application. These include energy drinks, events and soft
drinks. Bullards has so far refused to do so, as the business does
not want to be precluded from using its brand name in conjunction
with events or soft drinks, and intends to produce tonics to
complement its gin.
Marks with a reputation like Red Bull do benefit from a greater
breadth protection. Section 10(3) of the Trade Marks Act 1994
provides that trade marks with a reputation are infringed
where:
- a sign is identical with or similar to the trade mark; and
- the use of the sign takes unfair advantage of, or is
detrimental to, the distinctive character or reputation of the
trade mark.
However, there must still be a legitimate risk that the public
could confuse the origin of the goods or services in question.
Brand protection strategies
In response, Bullards has branded Red Bull a “bully”.
The company faced similar accusations in 2013 when it challenged a
Norwich brewery operating under the name ‘Redwell’.
Similarly, Hugo Boss faced backlash in 2020 after issuing a
number of small businesses with cease and desist letters demanding
that they stop using the word ‘boss’ as part of their brand
names and products. The subsequence backlash peaked with comedian
Joe Lycett changing his name to Hugo Boss.
At the other end of the spectrum, a dispute between whisky brand
Jack Daniels and an American author was resolved amicably after the
distiller sent a light-hearted letter politely requesting that the
author rebrand the cover of their book as it infringed Jack
Daniels’ intellectual property (IP) rights. The author promptly
complied and the dispute was resolved without any negative press.
Netflix has also received praise for ensuring the tone of its
communications to potential infringers reflects its brand.
Our recommendations to brand owners
Brand owners clearly have to take proactive measures to protect
their IP rights, but there is a careful balance to be struck. An
over-zealous letter from the legal team can undo the substantial
efforts made to develop a brand’s reputation. When issuing
cease and desist letters it is a good idea to assume they will
appear online, and involving the PR team alongside the lawyers to
consider that wider audience at an early stage is advisable. In a
David and Goliath-style dispute it is rare for Twitter to back
Goliath.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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