Red Bull GmbH v Hip Hop Beverage Corporation
[2012] ATMO 17
•10 February 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 1192498(32) - PIT BULL ENERGY DRINK - filed in the name of Hip Hop Beverage Corporation.
Delegate: | Nicole Worth |
Representation: | Opponent: Ben Fitzpatrick of Counsel, instructed by Michael Wolnizer of Davies Collison Cave. Applicant: No attendance at the hearing, but written submissions were provided by Jürgen Bebber and Andrew Sykes of Griffith Hack. |
Decision: | 2012 ATMO 17 Section 52 opposition – ss 44, 59 and 60 pursued – no grounds established – application to proceed to registration – costs awarded against opponent. |
Background
On 10 August 2007 (‘the priority date’) Hip Hop Beverage Corporation (‘the Applicant’) filed an application for registration of a trade mark, the relevant details of which are:
Application No: 1192498
Goods:Class 32: Non-alcoholic beverages, including energy drinks.
Trade Mark: PIT BULL ENERGY DRINK
The application was examined and after initial grounds for rejection under section 44 of the Trade Marks Act 1995 (‘the Act’) were withdrawn, it was accepted for possible registration. The acceptance was advertised in the Australian Official Journal of Trade Marks on 11 December 2008.
On 11 March 2009 Red Bull GmbH (‘the Opponent’) filed a Notice of Opposition objecting to the registration of the trade mark, nominating most of the grounds of opposition available under the Act.
The parties duly served and filed evidence as follows:
| Evidence in support | Statutory declaration of Dr. Volker Viechtbauer, General Counsel of Red Bull GmbH, with Exhibits VV-1 to VV-19, dated 11 December 2009. |
| Evidence in answer | Statutory declaration of Antonia Ochoa, Director of International Sales of Hip Hop Beverage Corporation, with Exhibits XX1 to XX10, dated 23 September 2010. |
| Evidence in reply | Statutory declaration of Cheryl Hrvoj, Solicitor with Davies Collison Cave, with exhibits CH-1 to CH-6. |
The parties requested to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, in Melbourne on 18 November 2011. The Opponent was represented by Ben Fitzpatrick of Counsel, instructed by Michael Wolnizer of Davies Collison Cave, Patent & Trade Mark Attorneys. The Applicant did not attend but Jürgen Bebber and Andrew Sykes, of Griffith Hack, Patent & Trade Mark Attorneys prepared written submissions on its behalf which were filed and served prior to the hearing.
Grounds and Onus
At the hearing the Opponent pursued grounds of opposition in respect of sections 44, 59 and 60 of the Act. As a formality, and for completeness of my decision, I decide that none of the other grounds in the Notice of Opposition have been established.
The onus is upon the Opponent to establish one or more of its grounds of opposition on the balance of probabilities[1]. The time at which the ground of opposition must be established is the date of filing of the applications[2], being 10 August 2007.
[1] Pfizer Products Inc v Karam (2006) 70 IPR 599 per Gyles J 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] and NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32].
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592; Winton Shire Council v Lomas (2002) 56 IPR 243; Lomas v Winton Shire Council [2003] AIPC 91-839.
Section 44
As a preliminary matter I note that the Notice of Opposition does not nominate any specific trade mark applications or registrations in support of its ground under section 44. Rather, this ground is couched in relatively vague terms describing the marks relied upon as “one or more trade marks used and/or registered in Australia by the opponent and/or other parties” and “trade marks the subject of International Registrations designating Australia”. Although the Opponent’s evidence in support refers to a number of its trade marks (particularly under the heading ‘Market Knowledge of Red Bull’), and exhibits a list of Australian registrations and applications, the specific trade marks upon which the Opponent relies for its ground of opposition under section 44 were not identified until the Opponent served and filed its submissions for the hearing.
Generally the Registrar does not consider it appropriate to raise such matters so late in proceedings[3] because an applicant may not have been given a reasonable opportunity to respond (although I note that in this case the Applicant does not appear to have raised any objections to the specific trade marks being identified so late in proceedings). In some circumstances it may be necessary to adjourn proceedings to allow an applicant that reasonable opportunity. However given that that some indication of the trade marks relied upon was given in the Opponent’s evidence in support, the lack of any objection from the Applicant, and my findings in relation to section 44, this is not necessary.
[3] See for example the delegate’s comments in Axis Communications AB v Action Electronics Co Ltd [2008] ATMO 58, at para 14.
Section 44 relevantly provides:
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.
The Opponent relies primarily upon its registrations shown below:
| Registration 934802 BULL Priority date: 14 Oct 2002 | Class 32: Non alcoholic beverages being refreshing beverages, energy drinks, whey beverages and isotonic beverages (hypertonic and hypotonic beverages for sportsmen and women and adapted to their needs). |
| Registration 1243191 RED BULL Priority date: 27 Sep 2007 | 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 |
That the goods of the subject application and the Opponent’s registrations are the same or of the same description is not in issue. Nor can the respective marks be considered to be substantially identical. The only remaining matter is whether the PIT BULL ENERGY DRINK trade mark is deceptively similar to the BULL and RED BULL marks.
The Opponent directed my attention to the definition of ‘deceptively similar’ in section 10 of the Act and quoted the accepted test for deceptive similarity given in Shell Co. of Australia Ltd v Esso Standard Oil Ltd[4]:
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on the recollection of the plaintiff’s mark, that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s…mark.
[4] Shell Co. of Australia Ltd v Esso Standard Oil Ltd (1961) 109 CLR 407 at 415 per Windeyer J.
The Opponent also advanced appropriate reasons and cited a line of authority in support of its ground under section 44, including that the marks need not be the same but rather the relevant consideration is whether those marks are likely to cause a significant number of people to wonder whether they are from the same source[5]; that a prominent and distinctive feature present in both may lead to deception or confusion[6]; that marks are remembered by general impression rather than accurate detail[7]; that commonality of idea may lead to a finding of deceptive similarity[8]; and that the nature of the goods involved are to be considered in assessing deceptive similarity[9]. Additionally the Opponent noted that whilst reputation is generally irrelevant in assessing deceptive similarity, there are exceptions where a trade mark is “notoriously so ubiquitous and of such long standing that consumers must generally be taken to be familiar with it”[10], and that the existence of a family of marks containing a common element is relevant to the assessment[11]. In accordance with these principles the Opponent submitted that the trade mark PIT BULL is deceptively similar to both BULL and RED BULL.
[5] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
[6] Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259.
[7] De Cordova v Vick Chemical Co. (1951) 68 RPC 103.
[8] Jafferjee v Scarlett (1937) 57 CLR 115.
[9] Pianotist’s Application (1906) 23 RPC 774.
[10] C.A. Henschke v Rosemount Estates Pty Ltd (2000) 52 IPR 42, at [52].
[11] McDonald’s Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37.
Despite these submissions I am not satisfied that PIT BULL ENERGY DRINK, (or, to discount the descriptive words, PIT BULL) is deceptively similar to either BULL or RED BULL. Although the trade marks share the common element BULL, I consider that the impression left by the words PIT BULL is that of a breed of dog, in spite of the contraction of the full name ‘Pit Bull Terrier’ to PIT BULL, whereas that left by BULL or RED BULL is that of a male bovine animal. I do not consider that the principles advanced above overcome this clear difference in impression and idea.
I also consider it unlikely that the general notion of an aggressive or angry animal, even applied specifically to energy drinks, will lead to deception or confusion amongst the consuming public.
In allowing for full notional use of the trade mark by the applicant, bearing in mind that such use must be in a normal and fair manner, I am not persuaded that consumers are likely to be confused or misled into believing that PIT BULL is another of the family of BULL marks owned by the Opponent.
Accordingly the Opponent has failed to establish its ground of opposition under section 44.
Section 60
Section 60 provides:
Trade mark similar to trade mark that has acquired a reputation in Australia
60. 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 1: For deceptively similar see section 10.
Note 2: For priority date see section 12.
It is not necessary to establish deceptive similarity or substantial identity in order to establish a ground under section 60. What is necessary is that the Opponent establish that its trade mark, or trade marks, had acquired a reputation in Australia before the priority date of the subject application and that because of that reputation, use of the Applicant’s trade mark would be likely to deceive of cause confusion.
In McCormick & Co Inc v McCormick[12] Kenny J discussed the meaning of “reputation” in section 60 in the following way:
What is intended by the word “reputation” in section 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.
Compare The Oxford English Dictionary. In s60, 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?
It is the above question which is to be adapted to the circumstances at hand.
[12] McCormick & Co Inc v McCormick [2000] FCA 1335; (2000) 51 IPR 102, at [81] – [82].
The assessment of a trade mark’s reputation in Australia is frequently gauged from details of annual turnover and promotional expenditure. See for example McCormick[13] in which it is stated, at [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.
[13] supra.
The Opponent’s submissions drew my attention to the following information as support for the Opponent’s RED BULL and BULL device trade marks (the device showing two bulls fighting) having established a reputation in Australia before the priority date:
· the RED BULL energy drink was first sold in Australia in 1997,
· in 2003 the Opponent sold more than 27.9 million units of its RED BULL energy drink in Australia, and 120.8 million units in 2008,
· since 2003 the Opponent has spent more than $45 million on television, radio and cinema advertising in Australia and more than $135 million on other forms of advertising,
· by 2008 the RED BULL energy drink held an 89% market share for energy drinks sold in licensed premises and a 45.8% market share for retail sales channels,
· the RED BULL and BULL device trade marks have been extensively promoted at Australian and international sporting events, including Formula 1 Racing,
· in a 2008 survey 80% of the general public associated the RED BULL trade mark with the Opponent’s energy drink.
From the information provided I have little doubt that the Opponent’s RED BULL trade mark enjoys a sizeable reputation in the context of the applied for goods, and that it did so by the priority date. The question to be answered however is whether deception or confusion is likely to arise because of that reputation.
The Opponent submits that the term ‘BULL’ itself has acquired a secondary meaning as a result of the massive promotion of the RED BULL mark and BULL device, and because of the Opponent’s use of the term ‘BULL’ in contexts such as ‘Racing Bulls’ in Formula 1 racing, ‘Flying Bulls’ in relation to the Opponent’s flying team and ‘VodkaBull’ in relation to the sale of the Opponent’s energy drink as a mixer in licensed venues. In light of these factors, the Opponent submits that there is a high risk of consumers being caused to wonder whether the goods sold under the PIT BULL mark were related to those of the Opponent.
I am not satisfied that the requisite reputation is shown to exist in the word ‘BULL’ itself. The majority of advertising examples provided relate to RED BULL, and the awareness surveys conducted in relation to ‘BULL’ appear to have been conducted only in Austria, Germany, Poland and the Netherlands. Whilst I acknowledge that ‘VodkaBull’ may be recognised in licensed venues as a reference to the Opponent’s goods used as a mixer with vodka, I do not consider that such recognition extends to uses of ‘BULL’ with words other than ‘RED’ or ‘VODKA’.
I also believe it unlikely that PIT BULL will be interpreted as an expression constructed by means of combining the primary word BULL with a preceding adjective describing a particular feature or attribute of that animal, such that PIT BULL may be regarded as belonging to the Opponent’s family of “[adjective] BULL” trade marks. Nor do I accept that the appearance in the Applicant’s mark of the word PIT, an expression which has an association with motor racing in indicating “any of the stalls beside the motor racing track in which competing cars undergo running repairs”[14], serves to reinforce an association with the RED BULL trade mark by virtue of the Opponent’s well-known involvement in the motor sports industry. Despite the Opponent’s reputation in the RED BULL or BULL device trade marks, I do not consider that it eclipses the accepted meaning of the phrase PIT BULL such that there is a reasonable danger of goods sold under the respective marks being thought to originate from the same trader. This outcome applies even when the Applicant’s trade mark is used without other trade indicia which emphasise a reference to the breed of dog (such as a device of a dog).
[14] Macquarie Dictionary Online, © Macmillan Publishers Australia 2012.
Lastly the general notion of an aggressive animal is not sufficient to suggest an association between PIT BULL and RED BULL or the BULL device. Despite the BULL device showing two bulls fighting and the Pit Bull Terrier being the most common breed used in illegal dog fighting, there is no evidence to suggest that the Opponent’s reputation extends to aggressive animals in general or to trade marks that are suggestive of aggression.
When the foregoing matters are weighed up I find I am not satisfied that use of the Applicant’s trade mark is likely to result in deception or confusion amongst a significant number of people. I thus find that the Opponent has not established its section 60 ground.
Section 59
Section 59 provides:
Applicant not intending to use trade mark
59. The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note: For applicant see section 6.
The Opponent submits that the presumption of an intention to use deriving solely from the act of filing the application is a prima facie one which can be rebutted by slight evidence, and inferences can be drawn to indicate a lack of intention to use. Once rebutted, it is further submitted, the onus of proof shifts to the applicant[15] and where an applicant has been put on notice that its intention to use the mark is in issue, a finding of lack of intention may be made[16].
[15] Americana International Limited v Suyen Corporation [2008] ATMO 4.
[16] Health World Ltd v Shin-Sun Australia Pty Ltd and Others (2008) 75 IPR 478.
In Shanahan’s Australian Law of Trade Marks and Passing Off[17] it is stated that:
[T]he act of filing an application is a claim to the requisite intention and the Registrar will not query the claim or consider opposition under s 59 unless an opponent establishes at least a prima facie case of lack of intention to use.
[17] Shanahan’s Australian Law of Trade Marks and Passing Off, 4th edition, [50.2305].
Thus, in order to consider whether the onus of proof has shifted to the Applicant in demonstrating its intention to use its trade mark in Australia, the Opponent must establish at least a prima facie face case of a lack of intention to use.
In its submissions the Opponent points to the following factors as establishing a prima facie case:
· the Applicant has clearly been put on notice given that the Notice of Opposition specifies s59 as a ground of opposition, and
· the Applicant’s evidence indicates that it never intended to use the mark as applied for because in the evidence the words PIT BULL ENERGY DRINK are not used on their own (rather, they are generally shown in combination with a device of a dog’s head or a device of fruit).
There appears to be no further investigation into the Applicant’s intention. Merely nominating section 59 in a Notice of Opposition is insufficient to shift any onus to the Applicant[18]. Similarly, asserting that evidence of past use of the trade mark in particular forms demonstrates the Applicant’s intention to use its trade mark in only those forms is speculative.
[18] Medley Distilling Co v Croakers Gully (Aust) Pty Ltd (2000) 53 IPR 430.
I am not satisfied that the Opponent’s makes a prima facie case of a lack of intention by the Applicant to use its trade mark. There is therefore no shift in the burden of proof and the Opponent has not established this ground of opposition.
Decision and costs
Section 55 of the Act provides:
55. 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 am not satisfied that the Opponent has established any of the grounds of opposition pursued. The trade mark application may, then, proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
The Applicant is the successful party and it is entitled to its costs. Accordingly, I award costs against the Opponent as per Schedule 8 of the Trade Mark Regulations 1995.
Nicole Worth
Hearing Officer
Trade Marks Hearings
10 February 2012
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