INTA Bulletin

September 1, 2012 Vol. 67 No. 15 Back to Bulletin Main Page

AUSTRIA: Color Mark Registration Covers Non-Identical Colors and Proportions

Red Bull GmbH is the owner of numerous Austrian and Community trademarks for energy drinks in Class 32, in particular CTM No. 3350501, depicting two bulls in red color fighting each other in front of a backdrop of a yellow sun circle with the words Red Bull in red color underneath, and CTM No. 2534774, consisting of the combination of the colors blue and silver in a ratio of about 50:50, which was registered on the basis of acquired distinctiveness. Red Bull distributes its energy drinks in cans showing a trade dress consisting of the aforementioned trademarks.

Red Bull sued an Austrian producer of canned energy drinks and its principal for trademark infringement. The infringing cans show on the front side a silver strip framed by two blue strips, and in the silver strip the words “Run” and “Cool” in red color separated by a yellow smiley face with sunglasses. The cans were intended for distribution in Poland and Lithuania, as well as in other European countries. Red Bull was successful at all three instances (Commercial Court of Vienna, Upper Provincial Court of Vienna, Supreme Court of Austria). Case 17 Ob 27/11m (Supreme Court of Austria, June 12, 2012).

The courts held that the Red Bull trademarks and trade dress had a reputation in the European Union, which meant that no likelihood of confusion was required; only similarity was crucial. They further held that the two-color trademark covered even colors and proportions that were not identical—that is, slight deviations were within the scope of protection. It was pointed out, moreover, that the evaluation of the impression made by the trademarks on the relevant public was a legal question, so that no expert testimony based on market research, needed to be obtained. Finally, the principal of the Austrian producer was held to have infringed Red Bull’s two-color trademark in bad faith. The principal’s intention in using the well-known color combination had obviously been to take unfair advantage, without due cause, of the repute and distinctive character of Red Bull’s trademark. This intention was underscored by the overall trade dress of the infringing cans.

This recent judgment is a landmark decision, as there are few Austrian court actions concerning color marks.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2012 International Trademark Association