30 August 2022


Monster applied to register RED DAWG in Class 32 for ‘non-alcoholic beverages’. Red Bull opposed on the basis of likelihood of confusion and unfair advantage (sections 5(2)(b) and 5(3) of the Trade Marks Act 1994 (the ‘Act’)), due to its earlier mark RED BULL with covered identical goods. 


Monster’s appeal to the UK High Court was dismissed on the basis that the Hearing Officer had not erred in his decision to find that:

(1) by adopting the RED DAWG mark, Monster sought to influence the economic behaviours of consumers of their products; and

(2) the similarity of the RED BULL and RED DAWG marks, although not causing confusion, would make it easier for Monster to sell its products without incurring the marketing costs that would otherwise have been incurred. 

Therefore, the Hearing Officer’s decision that the trade mark application for RED DAWG should be refused based on section 5(3) of the Act for taking unfair advantage (i.e. ‘free riding’) of Red Bull’s earlier mark, was upheld.

UKIPO Decision

Despite the identical nature of the goods, the Hearing Officer had rejected Red Bull’s assertion that there was a likelihood of direct or indirect confusion between the marks. However, he found that Monster did take unfair advantage of Red Bull’s earlier mark. Red Bull was able to demonstrate that:

  • The earlier mark RED BULL had a reputation in the UK;
  • Use of the later mark RED DAWG would ‘call to mind’ the earlier mark so that the consumer would make a ‘link’ with the earlier mark;
  • As a result, use of RED DAWG without due cause would cause Red Bull some form of injury or damage by taking unfair advantage of the earlier mark.

High Court Appeal

Monster appealed on the basis that Red Bull had not provided evidence in support of a finding of unfair advantage, or from which a risk of free riding could be inferred. Red Bull argued that, irrespective of the subjective intention of the owner of the later mark, a finding of unfair advantage could be inferred when the use of mark would have the objective effect of creating an unfair advantage.

Relying on earlier case law[1], the Judge agreed there was no requirement for a subjective intention to free ride on the reputation of an earlier mark. Therefore, a lack of evidence on this point was irrelevant. The important finding, which the Hearing Officer was entitled to conclude, was that Monster’s use of RED DAWG would take unfair advantage of RED BULL, because the similarity would enable it to sell more items without spending money on advertising or marketing. As there was no legitimate reason for this, i.e. no ‘due cause’, Monster’s use would amount to an unfair advantage in the form of free riding.

As such, there was no error in the Hearing Officer’s decision on the question of unfair advantage and the appeal was dismissed.


The decision is a positive one for brand owners seeking to enforce their rights in relation to brands with a reputation and re-emphasises the fact that the assessment of unfair advantage is an objective one. 

The decision also serves as a reminder that appellate courts will not interfere with findings of fact by the lower court (or UKIPO in this case), unless satisfied that the decision is one which clearly should not have been made. As the Judge put it ‘it is very often the case that there are competing factors in an evaluation, and that is why a decision needs to be made’.

For more information or if you have any questions, please contact Emily Roberts, Holly Webb or your usual IP team contact.

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[1]Jack Wills Limited v. House of Fraser (Stores) Limited [2014] EWHC 110 (Ch)

Key contact

Emily Roberts

Emily Roberts Partner

  • Intellectual Property and Media
  • Intellectual Property Disputes
  • Intellectual Property Portfolio Protection

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