The owner of a renowned trademark will have to tolerate the use of similar signs when there is just cause: previous use and good faith.

Red Bull is
holder in Benelux of a mixed trademark (hereinafter, renamed trademark)
requested on July 11, 1983 for non-alcoholic beverages in class 32
which is reproduced as follows:

For other
On the other hand, De Vries is the Benelux owner of the word mark THE BULLDOG in class 32 and
the following two mixed brands (from now on similar brand/s):

The brands THE
BULLDOG They are later than the RED BULL brand. However, before Red Bull applied for its trademark, De
Vries already used THE BULLDOG as a commercial name for an activity
restaurant, hospitality and beverage delivery services (services
“horeca”). Later, the brands began to be used THE BULLDOG
for energy drinks.

Within the framework of the judicial procedure
before the Supreme Court of the Netherlands in which Red Bull requested the cessation of the
production and marketing of said energy drinks with the sign THE
BULLDOG, the Court expressed certain doubts in relation to the
interpretation of the concept of just cause established in art. 5.2 of the
Directive 89/104 of Trademarks, so he decided to raise a question
preliminary ruling before the Court of Justice of the European Union.

Specifically, he wondered if he could
be classified as just cause the use by a third party of a similar sign (THE
BULLDOG) to a renowned brand (RED BULL KRATING-DAENG) for a product
identical (energy drinks) when it has been proven that the similar sign is
had used prior to the application for the renowned mark.

The Court indicates that, for the purposes of
determine whether this prior use could be qualified as just cause and could
allow us to justify obtaining an advantage from reputation, we must take into account
counts two elements: 

To do this, the degree of similarity between the
products and services for which the similar mark has been used, when
it began to be used THE BULLDOG for the product identical to that of the
renowned brand and at what point the renowned brand acquired said reputation.

In the present case it was understood that
the fact that De Vries used the trademarks THE BULLDOG for drinks
energetic was not an advantage of
renown of the Red Bull brand but rather it was a expansion of the range of products and
services which it previously sold.

In conclusion, the Court establishes
that effectively may be forced to the owner of a renowned brand, by virtue of a just cause in the sense of art. 5.2 of the Directive 89/104, tolerate use by a third party a
similar sign for a product
identical to the one registered by the renowned trademark, provided that the sign of the
third would have used with
anteriority at the request of the renowned trademark and provided that this sign
similar would have been used of good
fe. To assess such circumstances, the national court
must take into account the implementation and reputation of the sign similar to the
renowned brand; degree of similarity between the products distinguished by the
renowned brand and those for which the range of products of the
similar sign and the economic and commercial relevance of the use made by the
similar sign.