September 29, 2015
Volume 7 Issue 4
Taiwan Firm Loses Red Bull Trademark Case
Taiwan’s Intellectual Property Court ruled in favor of Austrian energy drink manufacturer Red Bull AG’s trademark infringement claim against lube supplier Ding Oil, preventing the Taiwanese company from using Red Bull’s logo and packaging design. The court also ordered Ding to pay U.S. $32,000 in damages.
Red Bull’s initial complaint contested Ding Oil’s use of the “Red Bull” and “Fly Bull” trademarks, which it had not registered on its lubricants, grease and related goods . The brand name “Red Bull” and the bull logo were both used on the signboard of Ding Oil’s physical store and website and a Facebook fan page, where its logos were shown to be very similar to Red Bull’s registered trademark. In that round, the court denied the Red Bull claim.
The Austrian company appealed, and in May of this year, Taiwan’s Intellectual Property Court granted Red Bull damages and found the name “Fly Bull” and the blue and silver package used in Ding Oil’s products to be similar to Red Bull’s registered trademark and orderd the lubricant marketer to stop using them.
Based on the sales price of Ding’s products, the court assessed damages of NT$700 multiplied by 1,500 units, amounting to NT$1.05 million (about U.S. $32,000).
“The significance of this case is that the fame of Red Bull is recognized by the Intellectual Property Court to be beyond the energy drink of its field and has been extended to the oil industry because of Red Bull's sponsorship in sports car racing activities. Therefore, it means that a well-known trademark can enforce against others in irrelevant fields as long as it can demonstrate its fame among the relevant consumers,” said Crystal J Chen, a partner at the patent attorney law firm of Tsai, Lee & Chen in Taiwan.
“Red Bull will continue watching over the Ding Oil’s next step,” added Chen.
Red Bull’s red-and-yellow bull logo was registered in 2008 and Red Bull Energy Drink and its blue and silver package design was registered in 2006.
Initially, Red Bull asked the intellectual property court to restrain Ding Oil from using its five registered marks or any marks that are identical or similar to Red Bull series of five registered marks. On March 25, 2014, the court granted Red Bull’s claim for its Red Bull name and logo but not for Fly Bull.
“[The courts thought] these two terms and device were not similar to Red Bull’s trademarks,” said Chen, adding that the court also originally declined to award damages, reasoning that Ding Oil did not act in bad faith because it had registered its own trademarks.
Red Bull Energy Drink was first launched in its home market in Austria in 1987. According to its website, Red Bull is currently available in more than 167 countries with about 50 billion cans of the drink consumed so far. Ding Oil is a Taiwanese lubricant company selling motor oil, industrial oil, white oil, grease and chemical additives.