FLUGEL doorgehaald vanwege slogan RED BULL VERLEIHT FLUGEL

OHIM 2 december 2014, IEFbe 1587, eerder als IEF 15454 (Red Bull tegen Asolo)
Uitspraak ingezonden door Wouter Pors, Bird & Bird. Gemeenschapsmerk. Red Bull vordert nietigverklaring van het woordmerk Flügel gedeponeerd door Asolo. De OHIM handhaaft de doorhaling van het gemeenschapsmerk Flügel op basis van de oudere merken "Verleiht Flügel" en "Red Bull verleiht Flügel" van Red Bull. Het verweer dat deze slogans door Red Bull nooit als merk zijn gebruikt en zeker niet voor alcoholhoudende dranken gaat niet op. [red. Er wordt beroep ingesteld]

The abovementioned evidence indicates that the earlier trade mark has been used tor a substantial period of time and it is generally known to a significant part of the Austrian public in the relevant market in conneetion with energy drinks, as it has been attested by independent sources, in particular the FESSEL-GfK and Karmasin market studies. As demonstrated by the 1997 survey, the mark ' ... VERLEHIT FLÜGEL' was known to 79% of the respondents and a total of 66% have seenlheard the expression one year before. Moreover, a total of 86% spontaneously associated the slogan with the applicant. lt is therefore considered that under such recognition numbers, this document, albeit with not much support from other evidence, serves to conclude that the aarlier mark already enjoyed a degree of recognition among the relevant public by the filing of the contested CTM. Additionally, the 2010 survey (which shows, among others, that 98% of all the interviawed persons and 100% of the energy drinks consumers always refer to Red Bull when hearing or seeing the slogan' ... VERLEHIT FLÜGEL') supported by the sales figures and marketing efforts show that the trade mark has a consolidated position in the market Moreover, the applicant refers to a decision of 27/11/2003 of the Regional Court of Appeal of Vienna which confirms the well-known character of the slogan ' ... VERLEHIT FLÜGEL'. Although national decisions are not binding for the Office, still they are admissible means of evidence and may have evidentiary value, especially if they originate from the Membar State the territory of which is also relevant for the proceedings at hand. In the present case, it is considered that the decision serves as an indication of the reputation of the earlier mark and the evidence submitted by the applicant also services to support the findings of that decision. Under these circumstances, the Cancellation Division finds that, taken as a whole, the evidence indicates that the aarlier trade mark enjoys a certain degree of recognition among the relevant public, which leads to the conclusion that the aarlier trade mark enjoys a reputation. Whether the dagree of recognition is sufficient for Artiele 8(5) CTMR to be applicable depends on other factors relevant under Artiele 8(5) CTMR such as, for example, the dagree of similarity between the signs, the inherent characteristics of the aarlier trade mark, the type of goods and services in question, the relevant consumers, etc.

First, it has to be noted that all the eontested goods in the present case (namely beers; mineral and aerated waters and ether non-aleohotic drinks; fruit drinks and fruit juices; syrups and other preparations tor the preparatien of drinks in Class 32 and aleohotic drinks (except trom beers); aleoho/ie essences; aleoho/ie extracts; fruit extracts [alcoholic} in Class 33) are conneeled to the reputed energy drinks to some extent, as explained in detail in sectien c) above.

Second, the evidenee adduced in the present case, shows that the applicant's earlier mark enjoys a reputation in Austria in conneetion with energy drinks. Furthermore, the applicant submitted a study (see above under Enelosure 2 'Fiügel association' carried out in 2010 by Karmasin Motivforschung) which showed that 85% of the total interviewed, 80% of the people aged between 14-36 and 88% of the energy drink eensurners assoeiate the CTM proprietor's product 'Fiügel' with the applicant.

Bearing in mind the foregoing, it is considered that, in view of the special connections between the earlier reputed goods and the contested ones, a substantial part of eensurners may decide to turn to the CTM proprietor's goods in Classes 32 and 33 in the belief that the contested sign is somehow linked to the applicant's reputed mark ' .. . VERLEIHT FLÜGEL', thus misappropriating its attractive powers and advertising value. This may stimulate the sales of the CTM proprietars products to an extent which may be disproportionately high in camparisen with the size of its own promotional investment and thus lead to the unacceptable situation where the propriator is allowed to take a 'free-ride' on the investment of the applicant in promoting and building-up good will for its mark.