Red Bull GmbH v Bullsone Co., Ltd

[2017] ATMO 121

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 no. 1663484 –LEAPING BULL ON SHIELD- in the name of Bullsone Co., Ltd.

Delegate:	Bianca Irgang
Representation:	Opponent: Ed Heerey of counsel instructed by Shelley Einfeld IP Intellectual Property Law Applicant: Shauna Ross of counsel instructed by FB Rice
Decision:	2017 ATMO 121 Section 52 opposition: sections 42(b), 44, 60 and 62A pressed – ground of opposition established under section 60 registration of trade mark refused.

Background

1. Bullsone Co., Ltd. (‘the applicant’), filed trade mark application number 1663484 on 10 December 2014 in classes 1, 3, 4, 5 and 12 of the International Classification of Goods and Services. Current details of the application are set out below.

   Trade mark:   (‘the Trade Mark’)

   Trade mark application no: 1663484            

   Filing Date:  10 December 2014

   Specification:  Class 1: Detergent additives to gasoline (petrol), Fuel-saving preparations, Antioxidant, Chemical additives to motor fuel, Water repellents, Anti-tarnishing chemicals for windows, Antifreeze, Brake fluid, Coolants for vehicle engines, Fluids for hydraulic circuits, Transmission fluid, Power steering fluid, Polish removing substances, Radiator flushing chemicals, Antistatic preparations (other than for household purposes), Chemical preparations for decarbonising engines, Chemical additives for oils, Oil-purifying chemicals, Glaziers' putty, Glass frosting chemicals, Anti-puncture preparations

   Class 3: Rust removing preparations, Paint stripping preparations, Perfumes, Aromatics for household purposes, Fragrances for household purposes, Aromatics for automobiles, Windscreen cleaning liquids, Detergents for automobiles, Automobile polishes, Polishing wax, Waxes for leather, Creams for leather, Abrasive cloth

   Class 4: Dust laying compositions, Dust removing preparations, Lubricants, Dust binding compositions for sweeping, Charcoal briquettes (tadon), Non-chemical additives to motor-fuel, Industrial grease, Lubricating oil, Gas for lighting, Carburants, Non-chemical additives for oils and fuels, Oil for the preservation of leather, Belting wax, Boiled oil for industrial purposes

   Class 5: Deodorants (other than for personal use), Insect repellents, Insect repellent incense, Insecticides, Disinfectants for hygiene purposes, Fumigating sticks; deodorizer for industrial purposes

   Class 12: Windscreen wipers, Rearview mirrors for automobiles, Automobile roof racks, Automobile chains, Covers for vehicle steering wheels, Luggage racks for motor cars, Seat covers for automobiles, cup holders for use in vehicles, Sun-blinds adapted for automobile, Vehicle door protectors(door defenders), Automobile bumper guard(car bumper protector), Gears shift knob, Anti-skid pad for motor cars, Sun visors for motor cars

2. Acceptance of the application for possible registration was published in the Australian  Official Journal of Trade Marks on 25 June 2015. Subsequently Red Bull GmbH (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars[1].

   [1] which together constitute ‘the Notice’

3. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).            

4. I heard the opposition in Sydney as a delegate of the Registrar of Trade Marks on 9 May 2017. The applicant was represented by Shauna Ross of counsel instructed by FB Rice. The opponent was represented by Ed Heerey of counsel instructed by Shelley Einfeld IP Intellectual Property Law.

   Grounds of Opposition

5. The Notice nominated four grounds of opposition under the Trade Marks Act 1995 (‘the Act’) being sections 42(b), 44, 60 and 62A were pursued at the hearing. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd[2] affirmed the approach in Pfizer Products Inc. v Karam[3] where Justice Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s goods, there is no requirement for me to consider the other grounds of opposition.

   [2] [2015] FCAFC 156, [133]

   [3] [2006] FCA 1663, [26]

   Evidence

6. The evidence in this matter consists of the following declarations:

   Evidence in Support

   ·Declaration of Jennifer Powers ( ‘Powers’) dated 21 December 2015

   ·Declaration of Kathryn Pickering (‘Pickering 1’) dated 17 January 2016

   Evidence in Answer

   ·Declaration of Chan-hoon Lee (‘Lee’) dated 4 May 2014

   Evidence in Reply

   ·Declaration of Kathryn Pickering ( ‘Pickering 2’) dated 25 July 2016

   Discussion

   Section 60 - Reputation in Australia

7. Section 60 of the Act provides:

   60 Trade 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.

8. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in the trade mark below:

   (“opponent’s trade mark”)

9. The opponent’s trade mark has also obtained registration. Trade Mark Registration no. 792346 is registered in every class and has a priority date of 27 April 1999. Unlike section 44 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the goods of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar. However, I say now that the goods for which the above trade mark is registered are the same as those of the Trade Mark.

10. It is for me to determine whether the opponent has established that before 10 December 2014  the opponent’s trade mark were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of its Trade Mark would be likely to cause the public confusion.

11. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: [4]

    (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:[5]

    “...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.”

    [4] [1999] FCA 1020 [50]

    [5] [1973] HCA 43; (1973) 129 CLR 353, 362

12. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[6] by Kenny J:

    What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

    reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

    Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

    Does the evidence establish that in Australia before 9 March 1992 the McCormick  & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

    [6] [2000] FCA 1335 [81]

13. Powers states that the opponent’s RED BULL branded energy drinks containing taurine and caffeine have been popular in the Far East since the late 1970s. Mr Dietrich Mateschitz, now Managing Director of the opponent, became involved with the Red Bull energy drink in 1982. Powers asserts that Mr Mateschitz adopted a new formula and created a new packaging and concept for the Red Bull Energy drink that was then launched in Australia in 1987. The typical layout of the Red Bull Energy drink and advertisements for the opponent’s goods and services as seen in the evidence is as follows:

14. I note that the above cans in the top left corner contain the words RED BULL as well as the opponent’s trade mark. The cans in the top right corner contain the words RED BULL as well as what appears to the opponent’s trade mark on a diagonal with only one of the charging bulls presenting on the front of the can. The Red Bull energy drink was sold in Austria for five years before its international launch in 1992 in Hungary and then in 1993 in Scotland. According to Powers, large scale international rollout started in 1994 in Germany and then United Kingdom. The opponent’s Red Bull energy drinks are now sold in 164 countries through the opponent’s wholly-owned subsidiaries or distribution partners.

15. Powers also outlines the total unit sales for the opponent’s Red Bull Energy drinks from 1994 until 2014. The growth and the total sales are very significant. The same can be said for the media and marketing expenses which are provided from the years 2010 and 2009 until 2014 respectively. Further to this, according to Eurobrand 2011 ranking published by The European Brand Institute in October 2011, RED BULL brand was ranked as number 24 of the 50 most valuable brand corporations in Europe and ranked number 63 of the 100 most valuable brand corporations worldwide.  In 2013 the world ranking of RED BULL was 49 out of 100.

16. I also note from the opponent’s evidence that considerable brand extension using the RED BULL trade mark and the opponent’s trade mark has taken place to include TV channels, mobile phones, magazines, a music recording label, clothing lines and events such as Formula One, Dakar Rally, World Rally Championship, MotoGP, Freestyle Motocross as well as supporting other sports events and cultural activities. The brand extension the opponent has engaged in under the opponent’s trade mark is very extensive.

17. I am satisfied that the opponent’s trade mark had acquired a significant reputation in Australia before the priority date of the Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the applicant would be likely to deceive or cause confusion.

18. Overall I consider that, given the reputation acquired by the opponent’s trade mark, a significant number of consumers would at the very least experience a reasonable doubt[7] as to the existence of some sort of connection between the opponent’s trade mark and the Trade Mark if it were used to the extent of all of the goods listed in the opposed application. In considering the similarities between opponent’s trade mark and the Trade Mark it becomes clear that the respective trade marks share some striking similarities.

    [7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

Opponent’s trade mark Trade Mark

1. Both trade marks contain the stylized graphic device of a charging bull with the front legs curled, back legs straight, a pronounced hump of the back of the neck with a curled upwards tail in the shape of the letter ‘S’. While the opponent’s trade mark does contain two bulls – mirror images – the opponent’s evidence demonstrates numerous usages of a single charging bull quite similar to the Trade Mark (see below):

2. I believe that there are striking similarities between the trade marks which add to the potential of confusion taking place between the trade marks. The applicant has argued that the opponent’s trade mark is often accompanied by the opponent’s house mark being the words RED BULL. I agree that there are numerous instances when the words RED BULL are used with the opponent’s trade mark, however, it is also clear to me that the opponent also has a strong reputation in its bull device as well as the words RED BULL. To suggest, in light of the opponent’s evidence that because the words RED BULL are often used in conjunction with the opponent’s trade mark means that the opponent does not have a reputation in the device solus is a fallacy.

3. Trade marks are commercially often used in conjunction with each other and while some may be ‘limping’ trade marks which rely heavily on the presence of the house mark in order to denote trade origin that is not the case with the opponent’s trade mark. The opponent’s trade mark is prominent and striking in its use on goods and on advertising which precludes any finding of its being a ‘limping’ trade mark.

4. The opponent has clearly invested a great deal of money and time in promoting its various trade marks and also in growing its business through significant brand extension. While section 60 does not require a finding that the trade mark are substantially identical or deceptively similar, I find that the similarities between the respective trade marks taken together with the opponent’s demonstrated reputation in Australia adds to the likelihood of confusion taking place in the marketplace.

5. I am satisfied that the opponent has established the section 60 ground of opposition in relation to all of the applicant’s goods. Having found in favour of the opponent in terms of section 60 there is no need for me to discuss the other grounds as set out in the notice, although this ground or any others in the Act may also be relied on in the event of an appeal from this decision.

   Decision

6. Section 55 of the Act provides:

   55  Decision

   (1)  Unless subsection (3) applies to the proceedings, 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:          Forlimitationssee section 6.

7. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60. Accordingly I refuse to register trade mark application no. 1663484.

   Costs

8. It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

   Bianca Irgang

   Hearing Officer

   Oppositions and Hearings

   19 October 2017