Red Bull GmbH - [2024] ATMO 24

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2247005 (classes 1, 3, 5, 7, 23, 26, 29, 30, 31, 34, 36, 45) – RED BULL with device – in the name of Red Bull GmbH

Delegate:

Nicholas Barbey

Representation:

Applicant: Samuel Hallahan of counsel instructed by Gestalt Law Pty Ltd

Decision:

2024 ATMO 24

Trade Marks Act 1995 (Cth) – section 33 proceeding – ss 46 and 187 considered – sufficient evidence filed for defensive trade mark status for a subset of items – certain items in divisional application not excluded from parent application – opportunity to amend – divisional priority date removed and application amended – trade mark application accepted

Background

This matter concerns a divisional application[1] filed by Red Bull GmbH (‘Applicant’) to register the following trade mark as a defensive trade mark:
[1] The application is a divisional application from Australian trade mark number 2087367.

Trade mark:  (‘Trade Mark’)
Number:  2247005  (‘Application’)
Lodgement date:            4 February 2022
Priority date:  11 May 2020
Specification:  Class 1: chemicals used in industry, science, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; leather and textile impregnating chemicals; adhesives for wallpaper; humus; compost; earth for growing; soil conditioning chemicals
Class 3: bleaching preparation, laundry wax, natural starches for laundry purposes; dry-cleaning preparations; dentifrices; breath freshening sprays; laundry starch
Class 5: pharmaceutical and veterinary preparations; caffeine preparations for stimulative use; sanitary preparations for medical purposes; dietetic food and substances adapted for veterinary use; appetite suppressants for medical purposes; food for babies; dietary supplements for animals; napkins for incontinence; hygienic articles for women, namely sanitary towels, panty liners, tampons, sanitary pants; chemical contraceptives; material for stopping teeth; dental wax; adhesives for dentures; dental mastics; preparations for destroying vermin; fungicides; herbicides
Class 7: milking machines; sewing machines; paper machines; machines for the textile industry; agricultural implements other than hand-operated; agricultural machines; incubators for eggs
Class 23: yarns and threads, for textile use
Class 26: lace; laces for edges and lace trimmings; embroidery; braids; buttons; hooks (haberdashery); eyes for clothing and shoes; needles; pom-poms; haberdashery, except thread; artificial flowers
Class 29: meat; fish; poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies; jams; compotes; eggs; edible oils and fats; meat, fish, fruit and vegetable preserves; desserts of yogurt, quark and cream; fermented vegetable foods (kimchi)
Class 30: rice; tapioca; sago; flour made from cereals; honey; treacle; yeast; baking-powder; salt; dressings for salad; spices; cereals for human consumption, including oat flakes and other cereal flakes
Class 31: agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh vegetables; seeds; natural and dried plants and natural flowers; foodstuffs for animals; malt; nuts (fruits); straw mulch; litter peat
Class 34: tobacco; smoking tobacco; snuff and chewing tobacco; cigars; cigarillos and cigarettes
Class 36: insurance;…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Continue reading Red Bull GmbH

Details

AGLC: Red Bull GmbH [2024] ATMO 24
Case: [2024] ATMO 24
Decision Date: 9 February 2024

CaseChat Overview and Summary

The applicant, Red Bull GmbH, sought to register its trade mark as a defensive trade mark in relation to certain goods and services. The Registrar of Trade Marks opposed the application on the ground that it was not likely that the use of the trade mark in relation to the specified goods and services would be taken to indicate a connection between those goods and services and the applicant. The matter came before Nicholas Barbey.

The central legal issue before the court was whether the applicant had satisfied the requirements of section 187(d) of the relevant Act, which mandates rejection of an application for defensive trade mark registration if it is not likely that the use of the trade mark will indicate a connection between the goods or services and the registered owner. This required the court to consider the extent to which the trade mark had been used and how that use might lead consumers to perceive a connection with the applicant.

The court reasoned that the extent of use of a registered trade mark is critical in establishing the likelihood of a connection for the purposes of defensive registration. While the Act does not explicitly require the trade mark to be famous or mention "reputation," it has been recognised that the mark must possess some reputation in relation to the goods and services for which it is non-defensively registered. This reputation is necessary for the unauthorised use of the mark in relation to other goods or services to suggest a connection with the owner. The court noted that the "connection" contemplated by the Act is not confined to a connection "in the course of trade" but extends to ordinary dictionary meanings, encompassing potential authorisation, sponsorship, endorsement, or strategic alliances. The applicant had argued that the nature of the trade mark, its lack of registration by other traders, its extent of use, the unique nature of its brand, and the presumption of registrability all supported the likelihood of such a connection.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

Section 187 of the Act relevantly provides:Additional grounds for rejecting application for registration or opposing registration In addition to any other ground on which: (a) an application for the registration of a trade mark as a defensive trade mark may be rejected; or…the application must be rejected or the registration may be opposed: …(d) in the case of a registered trade mark—if it is not likely that the use of the trade mark in relation to the goods or services in respect of which its registration as a defensive trade mark is sought will be taken to indicate that there is a connection between those goods or services and the registered owner. Evidently, the extent to which the registered trade mark has been used is critical to establishing the likelihood of a connection between the goods or services in respect of which defensive registration is sought and the registered owner of the trade mark. Use of the registered trade mark will inform whether any reputation exists in that mark and it will also shed light on how the mark is perceived by consumers. To be registered as a defensive trade mark, there is no requirement that the registered trade mark be famous nor does Part 17 of the Act mention the word ‘reputation’. Nevertheless, it has been recognised that:[T]he mark must have some reputation in relation to all or some of the goods and services in respect of which it is non-defensively registered. That is because without that reputation the (unauthorised) use of the mark in relation to other goods or services would not be likely to suggest a connection with the owner of the registered mark.[32][32] [2020] FCA 1530, [312] (Stewart J). The type of ‘connection’ mentioned in ss 185 and 187 of the Act is not limited to a connection ‘in the course of trade’.[33] Rather, the term has been ascribed its ordinary dictionary meaning.[34] Thus, it has been observed that a sufficient connection may be found:[35] · where the use of the trade mark in connection with the goods or services might be authorised use, or· where the registered owner might be sponsoring those goods or services, or· where the registered owner might be endorsing the goods or services, or· where the registered owner might have entered into a strategic alliance with another company, body or entity in order to produce the goods or to offer the services in question.[33] Ibid [305].[34] AT & T Corporation [2001] ATMO 96.[35] Ibid. The Applicant advanced several reasons which it says accentuate the likelihood that use of the Trade Mark in relation to the Goods & Services ‘will be taken to indicate that there is a connection between those goods and services and [the Applicant]’.[36] Attention was drawn to i) the nature of the Trade Mark, ii) the absence of any registration of the Trade Mark by other traders, iii) the extent to which the Trade Mark has been used, iv) the ‘unique nature’ of the Applicant’s brand and v) the presumption of registrability. Considering the foregoing, the Applicant submits that no ground for rejecting the Application under s 187(d) of the Act exists.[36] Submissions, [28].