Red Bull GmbH v Altanea Gida Anonim Sirketi

[2012] ATMO 120

TRADE MARKS ACT 1995

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

Re:Opposition by Red Bull GmbH to extension of protection of International Registration Designating Australia 1409363 – International Registration  1065216 - in the name of Altanea Gida Anonim Sirketi.

Delegate:	Debrett Lyons
Representation:	Opponent: Benjamin Fitzpatrick of Counsel instructed by Davies Collison Cave, Patent & Trade Mark Attorneys. Holder:  Not present or represented.
Decision:	2012 ATMO 120 Reg 17A.34 opposition: sections 42(b), 44, 59, 60, and 62A argued – s60 established. Opposition successful. Costs awarded against Holder.

Background

1.     On 10 August 2010 the International Bureau requested that the Registrar of Trade Marks extend protection of International Registration 1065216 to Australia.  Such a request is known as an International Registration Designating Australia (‘IRDA’).  Details of the IRDA are set out below:

Australian Application No.:               1409363 (IR 1065216)

Registered Owner  Owner of the IR:  Altanea Gida Anonim Sirketi (‘the Holder’)

Trade Mark:  

Goods:  Class 32: Mineral water, spring water, table water, soda water, fruit juices, namely, apple, grape juice, fruit juice concentrates, vegetable juices, namely, turnip juice, tomato juice, powders used in the preparation of fruit drinks, colas, soda pops, isotonic drinks not for medical purposes, energy drinks

[Convention] Priority Date:               5 August 2010

Endorsement:  Colour Claimed: The colour RED is claimed as a feature of the mark. The applicant has advised that the English translation of the words appearing in the trade mark is REPLAY MEANS PLAY A REMATCH.

2.     Following examination, the IRDA was advertised as accepted for protection in Australia in the Australian Official Journal of Trade Marks thus marking the commencement of a period during which any third party might oppose protection of the Trade Mark in Australia.  Opposition is allowed under the provisions of regulation 17A.29 of the Trade Marks Regulations 1995 (‘the Regulations’).

3.     On 7 July 2011, Red Bull GmbH (‘the Opponent’) filed a Notice of Opposition.

4.     Regulation 17A.33, set out below, specifies how opposition proceedings are to be conducted: 

(1)The Registrar must give to the opponent and to the holder of the IRDA an opportunity of being heard on the opposition.

(2)Regulations 5.7 to 5.17 apply, with the necessary modifications, for the purposes of the opposition.

(3)Despite subregulations (1) and (2), a requirement to serve a document on the holder, or to give the holder an opportunity to make written representations or to be heard, does not apply until the holder has notified the Registrar, in writing, of the holder's address for service in Australia.

5.     The International Bureau was informed of the opposition and the Holder was invited by the Registrar to provide an address for service in Australia.   The Holder did not provide an Australian address for service and has taken no active part in the proceedings.

6.     The Opponent filed Evidence in Support of its opposition as described later.  No evidence was filed by the Holder and so the Opponent asked to be heard.  The hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 16 November 2012.  The Opponent was represented by Benjamin Fitzpatrick of Counsel, instructed by Davies Collison Cave, Patent and Trade Mark Attorneys.  Present from that firm were Michael Wolnizer and Cheryl Hrvoj.  There was no attendance by or on behalf of the Holder and no written representations from it.

Grounds of Opposition and Onus

7.     Regulation 17A.31 adapts the grounds of opposition in the Trade Marks Act 1995 (‘the Act’) to opposition to an IRDA.

8. The Notice of Opposition is couched in broad terms but at the hearing Mr Fitzpatrick indicated that the Opponent pressed only those grounds dependent on sections 42(b), 44, 59, 60 and 62A of the Act.

9.     The Opponent bears the onus of establishing at least one of those grounds of opposition on the balance of probabilities.[1]

[1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 87 IPR 300 per Kenny J at [30] to [40]; NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051; (2011) 198 FCR 435; (2011) 283 ALR 743 per Greenwood J at [16] to 32]; Allergan, Inc v Di Giacomo [2011] FCA 1540; (2011) 199 FCR 126; 94 IPR 541 per Stone J at [11] to [12] and most recently Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

The Evidence

10.     The Evidence in Support comprises:

·     Statutory Declaration made by Cheryl Hrvoj dated 4 May 2012 together with Exhibits "CH-1" to "CH-2";

·     Statutory Declaration made by Larissa Baxter dated 30 April 2012 together with Exhibits "1" to "20" (hereinafter, ‘Baxter’);

·     Declaration made by AV. Zeynep Seda Alhas dated 26 April 2012 together with Exhibits "1" to "10" ; and

·     Affidavit sworn by Dr. Volker Viechtbauer dated 4 May 2012 together with Exhibits "1" to "7".

11.     Synoptically, the evidence establishes that the Opponent is an Austrian company which promotes and sells energy drinks.  Those drinks are best known by the registered trade mark RED BULL although other indicia of trade origin as later described are also associated with the drinks.

12.     The RED BULL energy drinks were first sold in Australia in 1997.   The sales of RED BULL energy drinks in Australia since 1997 have been very large indeed.  I take note that international sales of RED BULL energy drinks have been simply enormous.  In short, the evidence shows that RED BULL is[2] one of the most valuable soft drink brands in the world.

[2] And was at the Priority Date.

13.     Since 1997 the sale and promotion of RED BULL energy drinks has consistently emploed a particular trade dress which comprises blue and silver trapezoids with the words “Red Bull” placed centrally in red font between the trapezoids (‘the RED BULL trade dress’).  The RED BULL trade dress is used most notably on the drink can itself but also on a myriad of other 2-D and 3-D publicity material.  An example of the way the RED BULL trade dress is applied to the Opponent’s drink can is shown below:

14.     The Holder is a Turkish company. The Opponent’s evidence indicates that it also sells an energy drink.  Sales of that energy drink have been made in Turkey and elsewhere but not, as far as known to date, in Australia. 

15.     The Holder has not at any point used the trade mark RED BULL or any sign approximating that trade mark.  Instead, it has used and/or applied to register a number of logo style trade marks which use the word REPLAY in a red font placed centrally against blue and silver geometric forms.

16.     The Opponent and the Holder are in dispute in other jurisdictions as to whether the Holder infringes the Opponent’s intellectual property rights.  The evidence points to a pattern of evasive conduct by the Holder which has more than once either altered the style of its own trade mark, or filed for trade mark protection of those altered versions[3], in reaction to the Opponent’s legal proceedings or threats of legal proceedings.

[3] The evidence shows that an idiosyncracy of Turkish national trade mark law is that an applicant for trade mark registration has immunity from trade mark infringement whilst the application is pending.

Section 60

17. Section 60 of the Act provides:

60Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.

Note:For priority date see section 12.

18. In order to establish its ground under section 60 the Opponent must establish that the trade mark on which it relies has a reputation in Australia before the Priority Date and because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion. The Opponent relies on the asserted reputation of the RED BULL trade dress.

Reputation

19.     In McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, Kenny J said, at [85]-[86]:

[85] As Hearing Officer Thompson observed in [Hugo Boss] at 436:

[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.

As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also the esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the “recognition” component of the trade mark's reputation. The credit, image and values projected by a trade mark attaches to the “esteem” component of the reputation as do the public events and other trader's marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, “contra deals” and so forth.

... The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.

[86] In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: see, eg, Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer Plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, among other things.

20.     By the Priority Date, the Opponent’s energy drinks had been sold in Australia for 13 years.  During the whole of that time the drink can has taken on the same RED BULL trade dress.  The Australian and international sales figures (counted in units sold) are given in evidence.  Both sets of figures are monumental well before the Priority Date.  Baxter shows that in 2008/2009 the Opponent’s share of the energy drink market in Australia was 31.8% of the total market value.  When the Australian energy drink market is restricted to so-called “on premise” sales at bottle shops and hotels, the Opponent’s market share is 80%.

21.     The Opponent has spent very large sums of money during those 13 years on advertising and promotion of its energy drink.  Moreover, there has been far reaching diversity in the ways in which those goods have been promoted.  So, for example, there has been promotion by way of television, cinema and radio advertising campaigns but, by the Priority Date, the expenditure on other promotional ventures such as sponsorship was more than three times the expenditure on direct advertising on television, radio and cinema.

22.     The Opponent has, more than any other way, directed its promotional efforts on the sponsorship of Australian sporting events and sportsmen and women.  The sports involved are as varied as windsurfing, surfing, skiing, snowboarding, wakeboarding, street skating, triathlon, BMX, FMX, Moto GP, motocross freestyle, hang-gliding, Formula 1 and pole vaulting.  Over 200 Australian events were sponsored by the Opponent between August 2005 and August 2011 including snowboarding, wakeboarding, mountain bike, film festivals, music festivals, air racing, surfing, motocross freestyle, skateboard street, BMX, hang-gliding, motorcycle racing, freestyle soccer, rally driving, kite surfing, long jump, pole vault, Formula 1, running and cliff diving.  Whilst some of those events postdate the Priority Date, most do not.

23.     Taken on its own, this evidence provides in my opinion proof of a very significant reputation in Australia in the RED BULL trade dress at the Priority Date.  Nevertheless, it is important in my view to take cognizance of further evidence of the international promotion of the RED BULL trade dress which has particular interest to Australians.  For example, the Opponent owns the Formula 1 Red Bull Racing team.  One of its drivers, Mark Webber, is a well known Australian sportsman.  Notably, the Formula 1 racing programme includes an annual event in Melbourne.  Similarly, the Opponent sponsors riders in the MotoGP motorcycle racing class, including Australian champion Casey Stoner.  An annual event in that racing calendar is held on Philip Island[4].

[4] Mr Fitzpatrick also summarised other evidence submitted by the Opponent in this way:

Other sporting competitions and events are sponsored by, or include competitors who are sponsored by, Red Bull and are seen on free to air or cable TV in Australia and/or hold a round of the competition in Australia.  Examples include the Red Bull X-Fighters World Series, the Red Bull Air Race World Championship, the Red Bull Flugtag, Major League Soccer (the New York Red Bulls) and European soccer (FC Red Bull Salzburg). (Baxter [33]; Viechtbauer [19] [21] [22] [23]).  Other international events whose reputation spills over into Australia include NASCAR racing, the Dakar Rally (formerly the Paris Dakar Rally) and Ice Hockey. (Viechtbauer [15] [16] [20]).

24.     The Opponent has established to my satisfaction that the RED BULL Trade Dress acts as a trade mark and that it had acquired an impressive reputation in Australia at the Priority Date[5].

[5] Were it necessary to further deconstruct the protection of the RED BULL trade dress (and I do not find the need to so do), there is additional trade evidence that the trapezoid device component is recognised as a source indicator of the Opponent’s goods.  I also note here that the device component is the subject of independent trade mark protection by way of Australian Trade Mark Registration 762737 which it should be observed was accepted and registered on the basis of s41(5) evidence.

The Comparison

25. It is relevant to underscore the fact that it is section 60 as amended by the Intellectual Property Laws Amendment Act (2006) which applies in this case and so it is not necessary for the Opponent to establish that the respective trade marks are deceptively similar, as it would have been once upon a time.  In the case of Rogers Seller & Myhill Pty Ltd v Reece Pty Ltd [2010] ATMO 5, I wrote at [39-40]:

Confusion can not arise solely from the reputation of one trade mark. There must always remain a level of similarity between the marks, whether we call it deceptive similarity or something less, and no matter how small it might be. The likelihood of confusion must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller.

What can be said then of section 60 as we now find it is that it comprehends that the trade marks under comparison might be quite dissimilar, and yet, taken in combination with the repute of the opponent’s trade mark (and possibly other factors), deception or confusion is still more likely than not. Put another way, section 60 now contemplates that an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trade marks under comparison may even be quite dissimilar.

26.     The Trade Mark of the IRDA shares unmistakable features with the RED BULL trade dress.  They include the use of word element placed against a geometrically patterned background.  Both trade marks are in colour.  The words “Red Bull” in the RED BULL trade dress are in red.  The Trade Mark has the word “Replay” in red.  The IRDA states that “the colour RED is claimed as a feature of the mark”.  The two reds are a very close if not identical shade.  The words “Red Bull” and “Replay” are in a very close if not identical font.  The words are initially capitalized.  The words occupy a central location in both trade marks and they are of the same if not very close size and proportion relative to the remainder of the trade mark.  Directly beneath the words “Red Bull” and “Replay”, in the same font and relative proportion, all capitalized in both instances, are the words “ENERGY DRINK”.  Both trade marks use a background comprising blue coloured trapezoids.

Likelihood of confusion

27. I have as a judicial framework for this question extracted hereunder passages from well known cases - cases decided long before section 60 took its current form but which are nonetheless part of the heritage of section 60 and its jurisprudential predecessors.

28.     In the case of de Cordova v. Vick Chemical Co (1951) 68 RPC, Lord Radcliffe said at p 106:

The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

29.     In Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. (1937) 58 CLR 641, Dixon and McTiernan JJ. Said at p. 658:

In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.

30.     In the case of In Re Application by Pianotist Company (1906) 1A IPR 379 at 380; 23 RPC 774, Parker J said at p.777:

You must take the two words. You must judge of them, both by their look and by their sound. You must consider the goods to which they are to be applied. You must consider the nature and kind of customer who would be likely to buy those goods. In fact, you must consider all the surrounding circumstances; and you must further consider what is likely to happen if each of those trade marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.

31.     In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, Kitto J said at p.595 that a trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

32.     In Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353, Mason J said at 362 that:

...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.

33.     Again, in Australian Woollen Mills Ltd v F S Walton & Co Ltd, op.cit., Dixon and  McTiernan JJ stated at p. 657 that:

The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive.

34.     Finally, in WD & HO Wills v Philip Morris Ltd (1997) ATPR 41-590, Davies J stated at 44-146 that:

The intentional adoption of the features of a rival's get-up is eloquent testimony that it may succeed and is material from which the Court may more readily infer deception...

35.     The Opponent’s evidence includes material showing how the Trade Mark has been used in other jurisdictions.  There is no evidence that the Holder has sold anything other than what it describes on its own cans as “energy drinks”.  Those cans provide first hand evidence of how the Trade Mark is applied to at least those goods.  Below is a comparison of the Holder’s energy drink can and the Opponent’s can:

36.     It is readily appreciable that once the Trade Mark is “wrapped” around 180 degrees or more of the drink can, distinctions blur.  The Opponent has in the past brought a Federal Court “lookalike” action against a copyist using the name “Live Wire” in conjunction with a get-up similar to the RED BULL trade dress.  In the case of Red Bull Australia Pty Ltd and Red Bull GmbH v SydneyWide Distributors Pty Ltd and Emanuel Klimis (2001) 53 IPR 481; [2001] FCA 1228 (‘SydneyWide Distributors’), Conti J observed at [61-2] that:

Colour and colour combinations, particularly of cans such as those of the 250 ml size here involved, tends to attract attention before brand names embossed thereon.

…

A matter which has impressed me is how readily a mistake as to brand identity between Red Bull and Live Wire could be made by any person removing a Red Bull or Live Wire can from a retailer's fridge, based upon the "lookalike" packaging colours of either product, particularly if in circumstances where the brand name is not clearly enough in the direct view of the customer, at the point of sale, but instead is, for instance, wholly or partially facing the side or rear of a fridge comprising a particular point of sale.

37.     Whilst that action was brought for passing off and trade practices contraventions Conti J’s observations are relevant to the matter before me.  In the result, His Honour found the Opponent’s reputation to be so extensive that the respondents’ conduct was misleading and deceptive notwithstanding the use of a quite different trade mark, “Live Wire”, on its product packaging. 

38.     Baxter gives evidence that energy drinks are sold in Australia in a variety of outlets including supermarkets, convenience stores, service stations, cafes, restaurants, nightclubs and bars.  The evidence gives some indication of how the parties’ drinks are displayed and sold:

39.     Following the teaching of the case law that I should consider all the surrounding circumstances - in this case, the ways in which energy drinks are sold, the similarity in overall impression between the RED BULL trade dress and the Trade Mark of the IRDA, and the Opponent’s reputation and dominant market position - I am of the view that there is a clear danger that ordinary members of the public would either purchase the Holder’s energy drinks mistaking them for the Opponent’s goods.    

40.     That does not fully dispose of the matter since the IRDA covers not only “energy drinks” but goods described as “mineral water, spring water, table water, soda water, fruit juices, namely, apple, grape juice, fruit juice concentrates, vegetable juices, namely, turnip juice, tomato juice, powders used in the preparation of fruit drinks, colas, soda pops, isotonic drinks not for medical purposes” (‘the Residual Goods’).

41.     Despite the clarity that might have been afforded by the use of semi-colons in the goods description of the IRDA, the Residual Goods reduce to waters, fruit juices, and drink concentrates.  If “isotonic drinks not for medical purposes” are stand alone goods then my findings in relation to energy drinks apply directly to them.

42.     Mr Fitzpatrick submitted that in his experience bottled waters, fruit juices and energy drinks were sold in the same sections of large supermarket stores such as Coles.  There is no direct evidence of that matter but I am entitled to reply on my own observations which accord with the submission.  It is therefore quite possible for the Opponent’s energy drinks to be displayed in the same aisle and in relatively close proximity to bottled waters and fruit juices.

43.     In the SydneyWide Distributors case in the Federal Court, Conti J recognized that energy drinks were low priced goods selected after “a few seconds decision-making.”; [2001] FCA 1228, at [71]. In Red Bull GmbH v Javier Abollado Bris and Myriam Mugica Amilibia [2012] ATMO 18, Hearing Officer Worth said that “energy drinks and other similar beverages are cheap everyday consumable items which consumers would purchase without close consideration and inspection” and that “[w]ith this in mind I consider that such purchasers are likely to recall trade marks applied to those goods by overall impression rather than accurate detail.”

44.     Baxter’s evidence that energy drinks are sold not only in supermarkets but, amongst other places, convenience stores, service stations and cafes is a reminder that there are many environments where the Opponent’s goods would be sold alongside bottled waters and fruit juices.

45.     I am mindful of what Lord Denning had to say of the differences between ‘confusion’ and ‘deception’ in the case of Parker-Knoll Limited v. Knoll International Limited [1962] RPC 265 at page 174:

Secondly, ‘to deceive’ is one thing. To ‘cause confusion’ is another. The difference is this: When you deceive a man, you tell him a lie. You make a false representation to him and thereby cause him to believe a thing to be true which is false. You may not do it knowingly, or intentionally, but still you do it, and so you deceive him. But you may cause confusion without telling him a lie at all, and without making any false representation to him. You may indeed tell him the truth, the whole truth and nothing but the truth, but still you may cause confusion in his mind, not by any fault of yours, but because he has not the knowledge or ability to distinguish it from the other pieces of truth known to him or because he may not even take the trouble to do so.

46.     I am of the view that there is a real and tangible danger that an ordinary member of the public would be confused in this sense were the Residual Goods they to bear the Trade Mark of the IRDA in a normal and fair way. 

47. I find that use of the Trade Mark in respect of any of the goods of the IRDA would be likely to deceive or cause confusion and so I find that the Opponent has established section 60.

Decision

48.     I am to decide the opposition as required by regulation 17A.34(1) which provides:

Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:

(a) to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b) to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);

having regard to the extent (if any) to which any ground on which the IRDA was opposed has been established.

49.     The Opponent has established a ground of opposition and so I refuse to extend protection of the IRDA to Australia in respect of all goods.

Costs

50.     Having been successful in these proceedings, the Opponent is entitled to its costs which I order against the Holder at the Official Scale.

Debrett Lyons
Hearing Officer
Trade Marks Hearings
6 December 2012