Red Bull GmbH v Chia Khim Lee Food Industries Pte Ltd - [2012] ATMO 7

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 1245484 (32) - RED EAGLE - filed in the name of Chia Khim Lee Food Industries Pte Ltd.

Delegate:

Heath Wilson

Representation:

Opponent: Ben Fitzpatrick of Counsel instructed by Davies Collison Cave.

Applicant: No appearance or written submissions.

Decision:

2012 ATMO 7

Section 52 Opposition: Grounds under sections 44, 60 and 62A of the Act pressed – section 44 established – registration of trade mark refused – costs awarded against applicant.

Background

Chia Khim Lee Food Industries Pte Ltd (‘the applicant’) applied, on 11 June 2008, for the registration of the following trade mark:

Class 32: Mineral and aerated water, carbonated and non-carbonated drinks, fruit drinks and fruit juices, non-alcoholic beverage, energy drink (not for medical purposes), syrups and preparations for making beverage, beer

The above trade mark was allocated application number 1245484 and following the published acceptance of the trade mark in the Australian Official Journal of Trade Marks on 9 October 2008, it was opposed by Red Bull GmbH (‘the opponent’) under section 52 of the Trade Marks Act 1995 (‘the Act’).
The notice of opposition dated 9 January 2009 listed all possible grounds of opposition. The evidence which was then filed and served by the parties consisted of:

Evidence in Support

Statutory Declaration of Larissa Baxter (Legal Counsel for the opponent) dated 23 December 2009 with exhibits LB-1 to LB-19.

Evidence in Answer

Statutory Declaration of Anthony J Norris (Attorney for the applicant) dated 7 July 2010 with exhibits AJN1 to AJN5.

Evidence in Reply

Statutory Declaration of Cheryl Hrvoj (Attorney for the opponent) dated 7 March 2011 with exhibits 1 to 9.

To summarise the evidence, the Baxter declaration highlights the history and substantial reputation of the opponent’s RED BULL brand in relation to energy drinks beginning in Australia in 1997. The Norris declaration provides some information about the Singapore-based applicant, its international trade mark applications and disputes the opponent’s purported reputation in the word ‘RED’ solus. Finally, the Hrvoj declaration contains the results of a survey of retail stores in the Sydney and Melbourne metropolitan areas for energy drinks featuring the word ‘RED’. That declaration also consists of research regarding the similarities between Hawks and Eagles and the visual similarity of the applicant’s product labeling to the label of a potentially infringing product currently existing in the marketplace.
I heard the matter as a delegate of the Registrar of Trade Marks and prior to the hearing the opponent indicated that it would only be pressing grounds of opposition under sections 44, 60 and 62A of the Act. The hearing took place in Melbourne on 23 September 2011. Ben Fitzpatrick of Counsel appeared for the opponent instructed by Cheryl Hrvoj of Davies Collison Cave and the applicant did not appear or make written submissions.

Onus

The onus for establishing a ground of opposition rests with the opponent and the relevant standard of proof before the Registrar is the balance of probabilities (See 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) at [16] to [32]).

Reasons

Section 44(1) of the Act provides:

Section 44: Identical etc. trade marks

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.
The submissions by Mr Fitzpatrick in relation to the section 44 ground relied mainly on trade mark registration no. 668183: RED HAWK which was assigned to the opponent in May 2011. The priority date of that registration is 28 July 1995 and the specification of goods comprises:
Class 32: Beverages included in this class, including beers, aerated and mineral waters and other non-alcoholic drinks; fruit and vegetable drinks and juices; non-alcoholic ciders; ginger ale and ginger beer; essences for making these beverages
In the event that it became necessary, the opponent also relied on its other earlier filed trade mark applications and registrations:

TM No.	Trade Mark	Class / Statement of Goods and Services
654166	RED BULL	Class 32: Mineral and aerated waters and other non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages
792345	RED BULL	Goods and Services in Classes 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, 26, 27, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, 39, 40, 41 and 42.
1156737	Class 32: Energy drinks

All of the opponent’s trade marks predate the filing of the applicant’s trade mark. After assessing the specification of goods for the applicant’s trade mark and those for the opponent’s RED HAWK trade mark, I find that they are the same or of the same description, all being beverages in class 32. I find that none of the opponent’s trade marks are substantially identical to the applicant’s trade mark and Mr Fitzpatrick did not pursue this argument. I will therefore turn to the question of whether the trade marks RED EAGLE (and device) and RED HAWK are deceptively similar (see the definition under section 10 of the Act). To answer that question, it is necessary to consider the comments of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v F. S. Walton and Company Ltd (1937) 58 CLR 641 (at 658):
[T]he marks ought not … 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 … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded.

In Re Application by the Pianotist Co Ltd (1906) 1A IPR 379 at 380, Parker J said:
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.
Both trade marks are comprised of an identical prefix ‘RED’ followed by the name of a bird of prey, whether it is an eagle (applicant’s trade mark) or a hawk (opponent’s trade mark). As observed in London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 at 279:
…the first syllable of a word is, as a rule, far the most important for the purpose of distinction.
The applicant’s trade mark is also accompanied by the depiction of a Bald eagle. I am not of the view that the presence of this device creates a great point of difference between the trade marks. While the presence of the word RED and the reference to a bird in both trade marks are important factors in assessing the impression likely to be retained in the minds of potential consumers of energy drinks, it is not sufficient by itself for a finding of deceptive similarity. To decide in this case that the trade marks are deceptively similar solely on those particular factors would be to essentially provide the opponent a monopoly in trade marks consisting of ‘RED + BIRD’.
It is true that the words ‘hawk’ and ‘eagle’ in the trade marks are quite different in sound and appearance. This difference is obvious on a side-by-side comparison of the trade marks themselves, but that is not the test for deceptive similarity. Relevantly, in Jafferjee v Scarlett [1937] HCA 36, Chief Justice Latham said:
Lord Herschell's committee (quoted in Kerly on Trade Marks, 6th ed. (1927), at p. 270) put the point very clearly in the following passage:—"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…”
At the hearing, Mr Fitzpatrick went to some length to stress the similarities between hawks and eagles as birds of prey. As they are from the same family (Accipitridae), he submitted that there is more likely to be confusion between the two trade marks. Even if this confusion between the two birds was unlikely, a consumer may still recognise the similarities between the trade marks and assume a trade connection. In other words, the applicant’s and the opponent’s trade marks may not necessarily engender the same idea but they are associated ideas from which contextual confusion may arise. As in Fitton’s Application (1949) 66 RPC 110 at 113 (with my emphasis):
[N]o limitation is, to my mind, placed upon the nature of the confusion or deception so envisaged, whether it be visual or phonetic confusion of the marks themselves, or what is termed contextual confusion, or confusion or deception as to the trade provenance of the goods.
The usage of the expressions RED HAWK and RED EAGLE would also be novel as they are not the usual descriptions of the birds themselves. Eagles (including the particular eagle depicted in the applicant’s trade mark) and hawks are not red in colour. Therefore, the prefix of the word ‘RED’ appearing in the trade marks does not refer to the name of the birds to which it is attached nor does it refer to the colour of the goods. As a result, the juxtaposition of those words within the trade marks tends to focus attention on the word ‘RED’.
“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” (Registrar of Trade Marks v Woolworths (1999) 45 IPR 411) must also be considered. The fact that the goods of the respective trade marks are the same increases the likelihood of deception or confusion in the marketplace. In addition, energy drinks and the like are fast-moving products of low cost and purchasers of such goods are relatively unlikely to take great care or inspect the label closely prior to purchasing those items. Allowance must be made for ‘imperfect recollection’, and as Lord Radcliffe in De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106 said
…in most persons the eye is not an accurate recorder of visual detail and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.
Mr Fitzpatrick also referred to a decision of Hearing Officer McDonagh in Red Bull GmbH v Carabao Tawandang Co. Ltd [2006] ATMO 60 where the following trade mark was found to be deceptively similar to RED BULL. In that decision, the Hearing Officer commented that as Australian consumers may not understand the word ‘Carabao’, they would look to the image of the buffalo head to give the word some meaning. In the current matter, consumers would understand both words EAGLE and HAWK but they would conclude that the trade marks must be related because of the reference to similar birds combined with the unusual combination with the word ‘RED’.
In The Trinh Tran v Richard Allan Meldrum & Jo-Anne Meldrum [1999] ATMO 4, HOT PIRANHA was found not to be deceptively similar to HOT TUNA for clothing and the Hearing Officer placed weight on the fact that ‘hot is a laudatory description’ for clothing and would carry less weight as a result. In the matter before me, the word ‘RED’ if viewed by itself would have a entirely different meaning in relation to energy drinks (see U.B Natural Pty Ltd v Red Bull GmbH [2010] ATMO 106 (29 October 2010) However, I do not believe that consumers would view the two words (RED and EAGLE) separately, but carry away an overall impression of the trade marks. As in Clark v Sharp (1898) 15 RPC 141 at 146 (Ch D):
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance of all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes
I find that it is a combination of the identical goods, identical prefixes in the trade marks (on which attention tends to be focused for the above-stated reasons), associated ideas within the suffixes of the trade marks which suggests a connection between the goods and the other aforementioned circumstances that creates an overall impression of similarity between the applicant’s and the opponent’s trade marks.
I find on the balance of probabilities that there is a real and tangible danger of confusion between the opponent’s RED HAWK trade mark and the applicant’s RED EAGLE (and device) trade mark. As the applicant did not provide evidence sufficient for the trade mark to be accepted under the provisions of sections 44(3) or 44(4), I find that the ground of opposition under section 44 has been established.

Decision

Section 55(1) of the Act provides:
(1)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.

(2)Without limiting subsection (1), if the application was opposed on the ground specified in paragraph 62(a) (that the application, or a document filed in support of the application, was amended contrary to this Act), the Registrar may revoke the acceptance of the application and examine the application again under section 31.
Note:For examine and this Act see section 6.

The opponent has established a ground of opposition under the Act. It is therefore unnecessary to consider the strength of the other grounds of opposition it pressed. However, those grounds would still be available to the opponent in the event of an appeal from my decision. The applicant has been unsuccessful and I refuse to register trade mark application no. 1245484: RED EAGLE (and device).

Costs

The opponent has been successful in this opposition and has sought an award of costs. I therefore award costs against applicant to the extent allowed under Schedule 8 of the Trade Marks Regulations 1995.

Heath Wilson

Hearing Officer

Trade Marks Hearings

25 January 2012