RPC Bites #52 – trade mark wars: Red Bull v Bullards, Tesco v Lidl and Heineken v Virgin

Published on 14 December 2022

Welcome to RPC Bites. Our aim in the next 2 minutes is to provide you with a flavour of some key legal, regulatory and commercial developments in the Food & Drink sector over the last fortnight… with the occasional bit of industry gossip thrown in for good measure. Enjoy!!

Red Bull v Bullards trade mark dispute finally put to rest

Energy drink giant Red Bull has failed in its attempt to oppose an application made by Norwich based distillery, Bullards, to register the word 'Bullards' as a trade mark for (amongst other things) alcoholic and non-alcoholic beverages).

Filing its opposition against Bullards' application, Red Bull argued that the use of the word "bull" in the proposed mark meant that it was sufficiently similar to its own mark to risk consumers confusing the two marks and / or leading them to believe that there was a link between Bullards and Red Bull. In this regard, Red Bull claimed that Bullards had chosen to register the proposed mark in a bid to take advantage of Red Bull's reputation. However, the IPO Hearing Officer found in Bullards' favour, explaining that although both marks shared a common element, this was insufficient to confirm the existence of a likelihood of confusion.

Unless Red Bull appeals the decision, Bullards' marks will be registered and it will be free to use its mark in respect of various goods and services, including non-alcoholic drinks.

Sustainability pushed to the top of the menu at Deliveroo

Food delivery company, Deliveroo has announced that it will invest £2.5m in its sustainable packaging fund in an effort to boost its green credentials and save over 400 tonnes of plastic packaging waste.

The fund will provide Deliveroo's restaurant partners with a 50% discount on environmentally friendly packaging (including home compostable packaging and packaging made from recyclable paper, cardboard, or recycled plastic) which are purchased from its online store. Any unused vouchers will then be distributed to new restaurant partners. Not only that, but the food delivery giant has also pledged to investigate alternative options to reduce the harms from packaging that is not currently easily recyclable, and its packaging supplier has agreed to offset 1,500 tonnes of CO2 emissions, (which is reportedly the equivalent of the annual emissions of 300 standard cars).

Deliveroo hopes that at a time when hospitality businesses' margins are being squeezed, its efforts will help restaurants to make sustainable choices.

Tesco allowed to proceed with 'bad faith' claim against Lidl in ongoing trade mark dispute

In an update on the ongoing legal battle between Tesco and Lidl over the use of a yellow circle on a blue square background, Tesco will be allowed to argue that Lidl registered its trade mark in bad faith.

The rival supermarkets first disagreed in 2020, when Lidl issued proceedings against Tesco for use of a yellow and blue sign to promote its 'Clubcard prices' on certain items in its stores. This, Lidl claimed, amounted to the infringement of one of its trade marks, which features a yellow circle on a blue square background without the brand name "Lidl" within the circle. Lidl's mark is set out on the left below alongside Tesco's sign on the right.

Tesco counterclaimed, alleging that the trade mark had been registered in bad faith and that Lidl had no intention of ever using the mark in the course of trade. Lidl successfully applied for Tesco's counterclaim to be struck out in June 2022 but in this latest turn of events, Tesco has successfully appealed that decision.

Tesco argued that Lidl had registered the wordless trade mark simply to bolster its logo's protection rather than for actual use. At trial, this will allow Tesco to seek to argue that the court should declare the registration invalid.

Trade mark dispute brewing between Heineken and Virgin

Heineken and the Virgin Group are locked in a trade mark dispute following Heineken's plans to launch its new non-alcoholic beer, 'Desperados Virgin', in the UK. Desperados Virgin was originally launched in France in 2020 and is now available in over 50 countries worldwide.

Although it has not yet launched in the UK, Heineken has applied to have Virgin Group's "Virgin" trade mark declared invalid. Virgin's mark was originally registered in relation to a beer that was sold on Virgin Trains. In retaliation, Virgin has applied to the High Court for a declaration that Heineken will infringe its trade mark if the product is launched in the UK. Heineken also lodged (and subsequently withdrew) an application for the "Desperados Virgin" trade mark in the UK.

Virgin considers that there is a likelihood that consumers would shorten 'Desperados Virgin' to 'Virgin', adding to the likelihood of confusion. Heineken has argued that the term 'virgin' has become generic in the non-alcoholic drinks market and therefore lacks the necessary distinctiveness required to function as a trade mark.

Merry spritz-mas!

Just in time for Christmas, "Citizen Spritz" will be launching its non-alcoholic drinks range in the UK this December. A new entrant to the thriving No2Low market, Citizen Spritz' drinks are created using a natural blend of plant compounds and extracts rather than a distillation process, which the brand claims is more energy efficient. The drinks are designed to be mixed with soda water to create an aperitif like experience and the range consists of four flavours: bitter orange; cool lime; pink grapefruit, and passion fruit.

Citizen Spritz' launch is yet another reflection of the increased demand among consumers to reduce their alcohol intake, whilst also tapping into the increasingly popular spritz-style drinks space. The rise in popularity of low and no alcohol products has been notable; in December 2021, the Portman Group found that 32% of UK drinkers 'semi-regularly' consumed low and no alcohol products versus 25% in 2020.

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