Red Bull GmbH v Bull Riders Incorporation (Thailand) Limited
[2012] ATMO 115
•26 November 2012
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Red Bull GmbH to registration of trade mark application 1372205 (25, 32) - BULL Riders & Device - filed in the name of Bull Riders Incorporation (Thailand) Limited
Delegate: | Michael Kirov |
Representation: | Opponent: Ben Fitzpatrick of Counsel, instructed by Michael Wolnizer of Davies Collison Cave, Patent & Trade Mark Attorneys Applicant: No appearance |
Decision: | 2012 ATMO 115 Section 52 opposition: s 44 considered – trade marks deceptively similar and covering similar goods – registration refused. Costs awarded against the Applicant. |
Background
This is an opposition brought by Red Bull GmbH (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Bull Riders Incorporation (Thailand) Limited (“the Applicant”):
Application Number: 1372205
Trade Mark: (“the Trade Mark”)
Priority Date: 14 July 2010 (“the Priority Date”)
Goods:Class 25: Shirts; T-shirt; jeans
Class 32: Non-alcoholic drinks including energy and sports drinks
The Opponent was incorporated in Austria in the mid-1980s. Its principal product is a non-alcoholic beverage sold under the (registered) trade mark RED BULL which contains taurine[1] and caffeine (“the RED BULL® Energy Drink”) and which according to the evidence of Volker Viechtbauer, the Opponent’s General Counsel:
…is especially developed for periods of increased mental and physical exertion, increases performance, concentration and reaction speed, improves vigilance and well-being and stimulates metabolism.
[1] So named because it was first extracted from ox bile in 1826, taurine is, according to the website of the Mayo Clinic in the United States, an amino acid found naturally in meat, fish and breast milk said to regulate the level of water and mineral salts in the blood and thought to have antioxidant properties.
The RED BULL® Energy Drink was first sold in Austria in 1987 and by the Priority Date was sold in some 157 countries worldwide. It became widely available in Australia as from around 1999 where, the Opponent’s locally based Legal Counsel Larissa Baxter attests, it:
is sold in a variety of outlets including supermarkets, convenience stores, service stations, cafes, restaurants, night clubs and bars. In supermarkets and convenience stores, the RED BULL® [E]nergy [D]rink is presented to consumers either unchilled or on the shelf in refrigerators.
The product had garnered a very significant share of the relevant beverage market in Australia as at the Priority Date and the evidence discloses impressive (and increasing) sales revenue in this country since its launch here. Although the RED BULL® Energy Drink has been sold in several packaging forms since then (and a sugar-free variant was released for sale in bottle form in 2003), the product has principally been marketed both here and internationally in “slim-line” 250ml cans. In all cases the cans or other packaging bear the trade dress shown below featuring the RED BULL® trade mark (rendered in red) and a device comprising two (red coloured) bulls facing off in apparent combat against the backdrop of a golden disc:
It is apparent from the evidence that the Opponent invests a very significant proportion of its worldwide revenues into promotion of the RED BULL® Energy Drink and in Australia this includes regular print, TV, radio, cinema and online advertising as well as the “RED BULL sampling program”, where free samples and information regarding the product are provided to the public. The evidence also discloses apparently promotional use of the Opponent’s RED BULL and related trade marks on T-shirts and swimming vests. Perhaps most importantly in terms of achieving wide recognition for the RED BULL® Energy Drink and associated trade marks is the very considerable involvement of the Opponent in sponsoring well known athletes, extreme and other sports generally and a variety of “extraordinary” or newsworthy events, the aim of which, according to Ms Baxter, is “to display Red Bull marks prominently and to have the RED BULL® [E]nergy [D]rink readily available to those attending.”
Between 1999 and 2010 the Opponent also granted some 227 licenses to third parties to use the RED BULL trade mark for various merchandising activities in fields unrelated to the energy drink product per se. The result of the Opponent’s wide ranging promotional and licensing activities, as Mr Viechtbauer attests, is that:
According to the “Eurobrand 2010” ranking published by the European Brand Institute in September 2010 Red Bull was ranked number 17 of the 50 most valuable brand corporations in Europe and ranked number 10 of the 25 most valuable single brands in Europe.
According to the BrandZ top 100 ranking which is an authorative ranking report from MillwardBrown about the most valuable brands in the world, Red Bull was ranked number 93 in its most recent report from 2011. With regard to the brand value in relation to soft drinks, the BrandZ ranking held Red Bull to be the 4th most valuable brand worldwide. The financial analysis is based on information provided by BrandZ, Bloomberg and Datamonitor.
According to a publication of Deloitte and Laga of Spring 2010, Red Bull is ranked in the top 100 brands best protected on the web.
Red Bull is also ranked as one of the leading worldwide brands in the Famecount database. Famecount is a comprehensive source of data on usage trends within the major social networks. According to Famecount’s ( brand list which displays Facebook Stars who also have a Twitter or YouTube account, Red Bull is ranked number 3 in the “Top Social Network Stars Worldwide” and ranked number 4 in the category “Fastest Growing Stars Worldwide” on June 6, 2011.
As far as Australia in particular is concerned, as at the Priority Date the Opponent was the owner of some 56 registrations in Class 32 covering energy drinks for marks containing or consisting of the word “bull” and/or a bull device, including registrations for the word mark BULL alone. In this context Ms Baxter exhibits a copy of a study by Newspoll Market Research with her declaration, stating that:
The use and promotion of the RED BULL® brand has resulted in the BULL® mark acquiring a secondary meaning sufficient to associate it with RED BULL in Australia. A study carried out by Newspoll Market Research in December 2005 indicates that 76.9% of the general population and 85.9% of energy drink users have heard the term BULL in relation to non-alcoholic soft drinks or energy drinks. Of these, 74.5% of the general population and 80.2% of energy drink users associate the term BULL with RED BULL when used in connection with non-alcoholic soft drinks or energy drinks.
As regards the Applicant, the only information before me comes from IP Australia’s records because the Applicant has not filed or served any evidence in the present opposition. This publicly available information indicates that the Applicant was incorporated in Thailand and that it has only ever filed one other application in this country, being lapsed application 1377469 covering “Non-alcoholic drinks including energy and sports drink” in Class 32. The application lapsed in March this year when the Applicant lodged no response to an initial adverse report and was for the mark shown below featuring the words “Blue Red” and a device comprising two boxing kangaroos facing off against the backdrop of a golden disc:
At the heart of the present opposition is the claimed similarity of the Trade Mark to marks containing or consisting of the word “bull”, and/or the image of a bull, which had been used and/or registered by the Opponent in Australia as at the Priority Date.
Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 11 November 2010 and the Opponent filed its Notice of Opposition (“the Notice”) on 11 February 2011.
I heard the matter as delegate of the Registrar of Trade Marks on 17 September 2012 in Melbourne. Ben Fitzpatrick of Counsel, instructed by Michael Wolnizer of Davies Collison Cave, Patent and Trade Mark Attorneys, appeared for the Opponent. Mr Fitzpatrick’s oral submissions were supplemented by written submissions emailed to both the Applicant’s attorneys of record and me on 14 September. The Applicant did not appear or file submissions and was not represented at the hearing, with its attorneys of record, Admiral Trademarks and Patents Services, advising by telephone on 14 September that they had not received instructions.
Grounds of Opposition and Onus
The Notice lists some fourteen grounds corresponding to various provisions of the Act. The Opponent nevertheless confirmed via Mr Fitzpatrick’s emailed submissions of 14 September that it would only be pressing those grounds based on sections 42(b), 44, 59 and 60 of the Act. To succeed in its opposition the Opponent bears the onus of establishing at least one of these four grounds. As will become apparent, I have only found it necessary to address the Opponent’s s 44 ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.
As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the Priority Date.
Standard of Proof
I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[2]
[2] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (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 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].
The Evidence
The Opponent served and filed Evidence in Support as follows:
▪ Statutory Declaration by Cheryl Hrvoj made 5 October 2011, with Exhibits CH-1 to CH-4
▪ Affidavit by Volker Viechtbauer sworn 6 October 2011, with Exhibits 1 to 6
▪ Statutory Declaration by Larissa Baxter made 5 October 2011, with Exhibits 1 to 17
The Applicant’s attorneys subsequently advised that the Applicant would not be serving or filing any Evidence in Answer.
While, as it happens, not of direct relevance to my decision, I did raise at the hearing a query concerning the findings of investigations undertaken by Cheryl Hrvoj, (a legal practitioner employed by the Opponent’s attorneys), and documented in her above-mentioned declaration. Mr Fitzpatrick and Mr Wolnizer sought to address this query at the hearing itself, but Mr Wolnizer subsequently wrote to me, attaching a further Statutory Declaration made by Ms Hrvoj on 19 September 2012, saying:
At [the] hearing you raised a query regarding the scope of Ms Hrvoj's investigations outlined in her Statutory Declaration dated 5 October 2011. While that issue was addressed in the hearing, we attach a supplementary declaration to ensure there is no uncertainty concerning her evidence. A copy has been served on the Applicant's attorney.
Discussion
Section 44
The ground based on section 44 of the Act is indicated in the Notice as follows:
The [Trade Mark] is substantially identical with or deceptively similar to one or more trade marks registered or sought to be registered in Australia by the [O]pponent and/or other parties, including but not limited to the trade marks the subject of Australian trade mark nos. 42366, 654166, 668835, 784011, 792254, 792345, 792346, 828261, 867268, 921862, 930853, 934802, 938141, 1048936, 1085847, 1087040, 1093380, 1243191, 1243192, 1255678 and 1258052 in respect of similar goods or closely related goods (sic) and for which the priority date is earlier than that of the trade mark the subject of the application and therefore its registration would be contrary to Section 44 of the Act. The [Trade Mark] has not been used by the [A]pplicant to satisfy the requirements of Section 44(3) and/or 44(4) and there are no other circumstances which make it proper for the Registrar to accept the application.
The [Trade Mark] is substantially identical with or deceptively similar to one or more trade marks the subject of International Registrations designating Australia including but not limited to IR No. 788105, IR No. 790141, IR No. 791989, IR No. 866022, IR No. 961855, IR No. 969260, IR No. 971408 in respect of similar goods or closely related goods (sic) and for which the priority date is earlier than that of the trade mark the subject of the application and therefore, registration would be contrary to Regulation 4.15A of the Trade Mark Regulations 1995. The [Trade Mark] has not been used by the [A]pplicant to satisfy the requirements of Regulation 4.15A(3) and/or 4.15A(5) of the Trade Mark Regulations 1995 and there are no other circumstances which make it proper for the Registrar to accept the application.
Only s 44(1) of the Act is relevant in this case and this is set out below:
Identical etc. trade marks
44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant’s trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
As indicated above, the Opponent has identified a large number of marks in the Notice underpinning its s 44 ground, all of which are registered in its name. Many of these, including all of the International Registrations listed, are redundant as far as s 44 is concerned in that in many cases the same trade mark has been registered several times for identical, or essentially identical, goods or services. Mr Fitzpatrick nevertheless indicated that there were four individual registered marks that the Opponent principally relied upon in the opposition. Details of one representative (and domestically filed) registration of each of the four marks in question are set out in the table below. Relevantly in the context of the s 44 ground, three of the four registrations cover (inter alia) both Classes 25 and 32 and these two specifications (only) are detailed in the table. The fourth registered mark relied on is for the word mark BULL alone and covers goods in Class 32 only. It is not necessary to detail, or indeed to discuss, any of the further registrations relied upon by the Opponent because they are effectively superfluous. If the Opponent were to succeed based solely on one of the registrations in Classes 25 and 32 detailed below then it would have the result it seeks. Conversely, if its s 44 ground based on those registrations were to fail, then reliance on the further registrations indicated in the Notice would not advance its case any further.
| Regn No. | Trade Mark | Priority Date | Goods |
| 784011 | 27.10.98 | Class: 25 Clothing, footwear, headgear Class: 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages | |
| 921862 | BULL | 1.08.02 | Class: 32 Non alcoholic beverages being refreshing drinks, energy drinks, whey beverages and isotonic (hyper- and hypotonic) drinks (for use and/or as required by athletes) |
| 938141 | 21.02.02 | Class: 25 Clothing, footwear, headgear, including t-shirts, ladies' shirts, sweaters, anoraks, windbreaker jackets, aprons, head coverings, hats, headbands, suspenders, money-belts, caps; sportswear and sports shoes and boots, football or soccer boots and studs therefor, ski boots, non-slipping devices for boots and shoes, corsetry articles, babies' diapers of textile Class: 32 Non-alcoholic beverages including refreshing beverages, energy drinks, whey beverages and isotonic beverages (hypertonic and hypotonic beverages), for sportsmen and women, adapted to their needs; non-alcoholic malt based beverages, beers, wheat beer, beers called premium lager, porter, ale and stout; mineral and carbonated waters, fruit drinks and fruit juices; syrups, essences and other preparations for making beverages as well as effervescent tablets and powders for making non-alcoholic beverages and cocktails | |
| 1243191 | RED BULL | 27.09.07 | Class: 25 Clothing, footwear, headgear, including T-shirts, blouses, sweaters, anoraks, windbreakers, aprons, caps, hats, headbands, braces, belts (clothing), money-belts, sun visors; sportswear, footwear for sports, football boots and studs, ski boots; non-slipping devices for shoes; corsetry; babies' napkins of textile Class: 32 Non alcoholic beverages including refreshing drinks, energy drinks, whey beverages, isotonic, hypertonic and hypotonic drinks (for use and/or as required by athletes); beer, malt beer, wheat beer, porter, ale, stout and lager; non alcoholic malt beverages; mineral water and aerated waters; fruit drinks and fruit juices; syrups, essences and other preparations for making beverages as well as effervescent (sherbet) tablets and effervescent powders for drinks and non-alcoholic cocktails |
For s 44 to apply at all, the priority dates of the registrations relied upon must be earlier than the 14 July 2010 priority date of the opposed application. This requirement is met by all of the above registrations.
That said, as far as the Opponent’s s 44 ground is concerned I have only found it necessary to consider registration 938141 in this decision, being for the trade mark:
(“the Opponent’s Mark”)
In this regard it is sufficient for success under s 44(1) if the Opponent establishes on the balance of probabilities that:
• the opposed application covers “similar goods”[3] to those covered by registration 938141; and
• the Trade Mark is “deceptively similar”[4] to the Opponent’s Mark.
[3] As defined in s 14(1) of the Act, namely the same goods and/or goods “of the same description”.
[4] As defined in s 10 of the Act.
Similar Goods
The Class 25 goods covered by the opposed application are “Shirts; T-shirt; jeans” and these goods are obviously embraced by registration 938141’s coverage of “clothing” generally. The Class 32 goods covered by the opposed application are “Non-alcoholic drinks including energy and sports drinks” and these goods are likewise obviously embraced by registration 938141’s coverage of “Non-alcoholic beverages including refreshing beverages, energy drinks, whey beverages and isotonic beverages (hypertonic and hypotonic beverages), for sportsmen and women, adapted to their needs”.
I will accordingly consider the issue of whether the Trade Mark is deceptively similar to the Opponent’s Mark on the basis that both trade marks might in principle be used for the identical goods in Classes 25 and 32.
Deceptively Similar
In The Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481 the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said the following at [39] concerning the term “deceptively similar”:
[39] Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brasserie Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:
“Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.
In relation to confusion in particular, Dodds-Streeton J noted recently in Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (19 March 2012) (“Tivo”) at [105]:
It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.
Based on principles formulated by Kitto J in Southern Cross, French J (as he then was) conveniently restated the major considerations involved in assessing deceptive similarity under the Act in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“Woolworths”) at [50]:
In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:
(i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring. A mere possibility is not sufficient.
(ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the 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.
(iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.
(iv) The rights of the parties are to be determined as at the date of the application.
(v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.
In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:
“...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.”
It has long been held that in order to assess deceptive similarity trade marks should not be compared side by side[5]. Rather, I should attempt to assess the effect or impression produced on the mind of potential purchasers of non-alcoholic beverages such as energy drinks, or of clothing such as shirts, T-shirts or jeans, who know of the Opponent’s Mark (and perhaps have an imperfect recollection of it), when they encounter such goods being offered under the Trade Mark. As indicated in the above quote from Woolworths, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.
[5] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; (1961) 1b IPR 523, per Windeyer J (at first instance) at CLR 415; IPR 529.
In further elucidating the law relevant to the present opposition Mr Fitzpatrick submitted that:
A mark will be found to be deceptively similar to another mark if it takes a prominent and distinct feature of that mark. Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; De Cordova v Vick Chemical Co (1951) 68 RPC 103; 1b IPR 496; Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147; 1b IPR 440; Poloroid Corp v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498; Wolverine World Wide, Inc v Khoda Ali Ahmed [2008] ATMO 93 (27 November 2008).
In De Cordova v Vick Chemical Co, in finding that the marks VAPORUB and KARSOTE VAPOUR RUB were deceptively similar, Lord Radcliffe stated:
“…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.”
The commonality of the idea in the mark was discussed in Jafferjee v Scarlett (1937) 57 CLR 115, where Latham CJ stated, at page 121-122:
“Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived, if the goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.”
Recently, in Tivo at [100], Dodds-Streeton J restated the Full Federal Court’s reiteration in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 at [77] of the House of Lords unanimous approval in Aristoc v Rysta Ltd [1945] AC 68 of the principle that the court must allow for consumers who know only of one of the marks and have an “imperfect recollection” of it when encountering the other trade mark, and that little assistance is to be gained from meticulous comparison.
…
At [122] her Honour approved the principle by Whitford J in Re Frigiking Trade Mark [1973] RPC 739 that:
“…where a distinctive mark or a highly distinctive part of a mark was used with an addition or substitution, consumers might think that the new mark indicated the same source of origin as the old mark.”
The determination as to whether or not marks are deceptively similar to each other requires consideration of the nature [of] the goods involved, including the circumstances of their sale and the nature of the consumers. See Pianotist’s Application (1906) 23 RPC 774 at 777 per Parker J; Conde Nast Publications v Taylor [1998] 864 FCA at p510.
With that as general background to his further submissions, Mr Fitzpatrick went on to highlight the following[6] about the Opponent’s Mark in particular:
· The impression based on the recollection that a person would have from the words “Red Bull” in the Opponent’s Mark is of a bull, and the colour red;
· The addition of the “charging bulls” device reinforces the impression of both the prominent and distinct feature of the words “Red Bull”, and also the main idea left on the mind by those words. The image of the charging bulls reinforces the prominent and distinct feature of the mark, BULL, and their angry posture supports and reinforces the idea left on the mind of RED, or of a red bull due to the association of the colour red with anger;
· Neither the word “bull” nor the image of a bull is an obvious descriptive term or laudatory term in relation to goods in Classes 25 or 32 and consumers would have no reason to believe this concept would be used in relation to such goods other than to distinguish them from the similar goods of other traders; and
· Neither is the colour red an obvious descriptive or laudatory term for bulls as it is not their normal colour and consumers would have no reason to expect the colour red to be associated with the word “bull” in relation to goods in Classes 25 or 32.
· The first Hrvoj declaration confirms that as at 11 August 2011 there were no registrations covering energy drinks in Class 32 for marks containing or consisting of the (exact) word “bull” and/or a bull device, other than those owned by the Opponent.[7]
[6] Which I have, in part, paraphrased.
[7] Whereas it is apparent from the Trade Marks Register that as at 11 October 2011 the Opponent owned some 80 such registrations.
Bearing the foregoing in mind, Mr Fitzpatrick made the following observations[8] in relation to the Trade Mark:
· The Trade Mark has 3 elements. The first is the word “BULL”…in the colour Red (which is also the colour of the text appearing on the Opponent’s goods). The second element is a silhouette or picture of a bull. The third element is the word “Riders”, in smaller, thinner font and in italics, not coloured red, not curved as the element BULL is, all making it less noticeable and more difficult to read than the first element;
· The word “bull” and the silhouette of a bull combine to make the dominant impression of the Trade Mark in the memory that of a bull;
· Furthermore, the use of the colour red as the only colour, and only in respect of the BULL element, means that the impression based on recollection is of, not only a bull, but of a red bull;
· Instead of reinforcing the “Riders” element of the opposed mark, for example, by showing a picture of a (bull) rider, or at least a picture of a bull with a rider on it, the pictorial element of the opposed mark reinforces the BULL element;
· The only use of colour in the opposed mark is in the word “bull” which is a striking red colour. This draws attention to the BULL element, and away from the “Riders” element, which is not coloured, and thus distinguished from the BULL element;
· This use of colour, font, size and placement, along with the absence of a rider on the bull, deemphasizes the “Riders” element, and leaves an impression on the mind of a (red) “Bull”, rather than of “Bull Riders”; and
· The Applicant has failed to provide any explanation for its decision to combine the features of a bull and the colour red. In the absence of any explanation, it is reasonable to infer that it was chosen to improperly benefit from the similarities with the Opponent’s Mark.
[8] Again, I have paraphrased Mr Fitzpatrick’s actual words here somewhat.
Mr Fitzpatrick also referred to a number of other successful oppositions or court actions taken by the Opponent in Australia and made the following further points:
· As regards the Class 32 goods covered by the parties’ marks, Conti J noted in Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) 53 IPR 481 (“Sydneywide 1”) at [71] that non-alcoholic drinks including energy and sports drinks are “in the nature of an impulse market” characterised by a low price and “a few seconds decision-making.”[9]
· Similar observations were made by the Hearing Officer in Red Bull GmbH v Javier Abollado Bris and Myriam Mugica Amilibia [2012] ATMO 18 at [15], namely that “energy drinks and other similar beverages are cheap everyday consumable items which consumers would purchase without close consideration and inspection” and at [17] that “with 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.”[10]
· The overall impression created in the recall and on the mind by the devices in both parties’ marks is of bulls, and of angry bulls, an emotion commonly associated with the colour red;
· It is highly likely that consumers would glance at the Trade Mark, notice the prominent feature of the element BULL in red, and the device of the bull and presume that the product is produced by the Opponent. Furthermore, such products would commonly be sold without the intervention of sales staff who may correct such a misconception; and
· In the circumstances of the sale of the goods, due to the similarity of the overall impression between the Opponent’s Mark and the impression created of a bull and the colour red by the Trade Mark, there is a real and tangible danger that an ordinary member of the public would, at the very least, be caused to wonder whether the Applicant’s goods were those of the Opponent, or whether the Applicant might be associated with the Opponent.
[9] I mention that Conti J’s decision was unanimously upheld by the Full Federal Court (Branson, Weinberg and Dowsett JJ) in Sydneywide Distributors Pty Ltd v Red Bull Australia (2002) 55 IPR 354.
[10] Similar remarks were also made by the Hearing Officer in Red Bull GmbH v Carabao Tawandang Co. Ltd [2006] ATMO 60 (18 July 2006) at [22].
As is apparent from the above, Mr Fitpatrick’s submissions made much of the fact that the element BULL in the Trade Mark as filed is rendered in the colour red. While I note that the opposed application does not bear an endorsement specifically limiting any part of the Trade Mark to a particular colour or colours, I do nevertheless think Mr Fitzpatrick’s point is well made. This is because the absence of a colour limitation effectively means the putative registrant would in principle be free to use the Trade Mark in any colour combination. Indeed, it might in principle use a very similar combination of colours to those shown in paragraph 4 above in which the Opponent’s Mark is used. It is, moreover, reasonable in any event to assume the Opponent’s intention is to use the Trade Mark with the element BULL rendered in the colour red, given this is the manner in which the Trade Mark appears in the application as originally filed.
In view of the fame of the RED BULL® Energy Drink and of the Opponent’s associated trade marks as shown in the evidence I think Mr Fitzpatrick is also right to question the Applicant’s bona fides in selecting a trade mark featuring the theme of a bull and dominated by the word “bull” rendered in bold red letters for (inter alia) its similar goods. In this regard I agree with him that the absence of any apparent reason for the Applicant to have specifically chosen such a trade mark is significant on the face of it because it does suggests the Trade Mark was chosen to improperly benefit from its similarity to the Opponent’s Mark. In similar circumstances in Sydneywide 1 Conti J noted with approval the often quoted words from the joint judgment of Dixon J (as he then was) and McTiernan J in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 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.
I mention too that the evidence shows that the Opponent has sponsored many (often high profile) athletes over the last decade or so which involve “riding” bicycles or motor bikes, or surfboards, windsurfers, skateboards and the like. As Mr Fitzpatrick mentioned, this fact might well contribute to the risk of deception or confusion and casts further doubt upon the Applicant’s intentions in selecting the Trade Mark given, as Ms Hrvoj puts it in her 5 October 2011 declaration:
A major part of [the Opponent’s] marketing strategy is the sponsorship of athletes across a wide range of sports and pursuits. As many of these sports or events involve “riding”, sponsored athletes are often referred to as “Red Bull Riders” and sometimes this is abbreviated to “Bull Riders”.
I am otherwise in agreement with Mr Fitzpatrick’s submissions as outlined earlier and am satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark. I have already noted that the Trade Mark covers goods the same as those covered by the Opponent’s registration 938141. The Opponent has accordingly established its s 44 ground of opposition.
Decision
Section 55(1) of the Act provides:
Unless the proceedings are discontinued or dismissed, the Registrar
must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then
specified in the application;
having regard to the extent (if any) to which any ground on which the
application was opposed has been established.
Note: For limitations see section 6.
I have found the opposition to be successful on the ground raised pursuant to s 44 of the Act. I accordingly refuse to register trade mark application number 1372205.
Costs
In the event that it prevailed, Mr Fitzpatrick requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is so entitled and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
26 November 2012
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