Importance of having a trade mark protection at the earliest opportunity

The importance of registering your proposed trade mark at the earliest opportunity can be seen in the case of Monster Energy Company v Red Bull GmbH [2022] EWHC 2155 (Ch). The well-known energy drink company, Monster Energy, applied to register their UK trade mark ‘RED DAWG’. Upon Monster Energy’s the application the trade mark was published, which then enabled prior trade mark owners the opportunity to file an opposition to the application under one of the grounds that is set out in s5 of the Trade Marks Act 1994. Subsequently, Red Bull who has several registered trade marks, including ‘RED BULL’, filled an opposition application under s5(2) and s5(3) of the Trade Marks Act 1994, in which they argued that Monster Energy’s new trade mark is identical or similar to Red Bull’s registered mark and that the existence of Monster’s proposed mark would take unfair advantage of Red Bull’s earlier trade mark.

The court disagreed that the two marks would cause confusion because of the similarity however upheld Red Bull’s s5(3) TMA 1994 argument, namely that Monster Energy would be taking unfair advantage of Red Bulls strong reputation. The court explained that even though there was no present commercial dishonesty from Monster Energy’s part the court justified their decision on the basis that Red Bull possess a strong reputation in the energy drink industry, consumers will be likely to link the two marks, in doing so this would allow Monster Energy to sell its products easily and without the need to acquire more marketing costs that would otherwise be needed. This commercial advantage would mean that Monster Energy would be free riding on Red bull’s reputation of its current mark.

This highlights the extent of protection that is afforded to earlier trade mark owners. The following things could be useful for a more comprehensive protection, firstly consider whether you would like to register a range of marks to give you a more comprehensive protection, this can be from ranging from words, logos, shapes/packaging of goods and so on. Secondly, register your mark early. Lastly, you may consider carrying out a trade mark search, this will make you aware of any current registered marks which will allow you to assess the success of registering your mark or any future risks that are associated with it.

If you would like to discuss the protection of your brand, please do get in touch with the Trademarkroom team.

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