Red Bull GmbH v Javier Abollado Bris and Myriam Mugica Amilibia

[2012] ATMO 18

TRADE MARKS ACT 1995

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

Re:Opposition by RED BULL GMBH to protection of International Registration Designating Australia 1305940(32) – Internal Registration 1003074 - TORO LOCO ENERGY DRINK AND DEVICE - in the name of Javier Abollado Bris and Myriam Mugica Amalibia.

Delegate:

Nicole Worth

Representation:

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

Holders: not present.

Decision:

2012 ATMO 18

Reg17A.29 opposition – sections 44 and 60 – section 44 established – trade marks deceptively similar – protection refused in respect of all goods – costs awarded against holder.

Background

1. The International Bureau requested of the Registrar of Trade marks, on 10 March 2009 (‘the priority date’), that protection of International Registration 1003074 be extended to Australia. Its request is known as an International Registration Designating Australia (‘IRDA’) and it was given the Australian trade mark number 1305940. The relevant details of the IRDA are depicted below:

   Holders:Javier Abollado Bris and Myriam Mugica Amilibia (‘the Holders’)

   Goods:Class 32: Non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages.

   Trade Mark:                   

   ‘the Holders’ trade mark’

2. The IRDA was examined and accepted for possible protection. The acceptance was advertised in the Australian Official Journal of Trade Marks on 30 July 2009.

3. On 30 October 2009 Red Bull GmbH (‘the Opponent’) filed a Notice of Opposition to the extension of protection, nominating most of the grounds available under the Trade Marks Act 1995 (‘the Act’) and Trade Mark Regulations 1995 (‘the Regulations’) to oppose an application.

4. The Opponent served and filed evidence in support of its opposition and was granted leave to serve further evidence, as below:

   ·     Statutory declaration of Michael Wolnizer, Partner with Davies Collison Cave, Patent & Trade Mark Attorneys, with Exhibits MCW-1 to MCW-8, dated 30 September 2010,

   ·     Statutory declaration of Dr. Volker Viachtbauer, General Counsel of Red Bull GmbH, with Exhibits 1 to 16, dated 28 September 2010,

   ·     Statutory declaration of Dr. Volker Viachtbauer with Exhibits 1 to 6, dated 28 September 2010,

   ·     Statutory declaration of Uwe Baumeister, Merchandise and License Manager of Salzburg Sport GmbH, with Exhibits 1 to 8, undated, and

   ·     Statutory declaration of Michael Wolnizer with Exhibits MCW-1 to MCW-4, dated 1 May 2011.

5. The Holders did not serve or file any evidence in answer.

6. The Opponent 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 Holders did not appear.

Onus and Grounds

1. The onus is upon the Opponent to establish one or more of its grounds of opposition on the balance of probabilities[1]. The date at which the ground of opposition must be established is the priority date of the IRDA[2], being 10 March 2009.

   [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.

2. At the hearing the Opponent pursued grounds of opposition in respect of sections 44 and 60 of the Act. As a formality, and for completeness of my decision, I find that none of the other grounds in the Notice of Opposition have been established.

Section 44

1. 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.

1. The Notice of Opposition lists the following trade mark registrations upon which the ground of opposition under section 44 is based.

355520 TORO BRAVO	784011	828261
854695 CRAZY BULL	930853 IRDA:788105	1048936
1085847 IRDA:866022	1087037 IRDA:867082 CRAZY BULL	1255678 IRDA:969260
1294399 IRDA:997417 TORO ROJO	1296688 IRDA:998944 TORO ROSSO

1. All of the cited registrations are owned by the Opponent and are for the same goods or goods of the same description as that specified in the IRDA, and they all have earlier priority dates than the IRDA.

2. The Opponent did not suggest that the Holders’ trade mark is substantially identical with any of its trade marks. I need only decide whether the Holders’ trade mark is deceptively similar to any of the Opponent’s trade marks.

3. In its submissions 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[3]:

   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.

   [3] Shell Co. of Australia Ltd v Esso Standard Oil Ltd (1961) 109 CLR 407, Windeyer J at 415.

4. The Opponent also cited a line of authority in support of its ground under section 44, including:

   ·     that the trade marks needs not be the same but rather cause a significant number of people to wonder whether the goods upon which they are used are from the same source[4],

   ·     that a prominent and distinctive feature common to both may lead to deception or confusion[5],

   ·     that trade marks are remembered by general impression rather than accurate detail[6],

   ·     that commonality of idea may lead to a finding of deceptive similarity[7],

   ·     that the nature of the goods involved are to be considered in assessing deceptive similarity[8],

   ·     that where an objection to registration of a trade mark would exist in its English form, a similar objection should be made to its foreign equivalent[9].

   ·     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].

   [4] Southern Cross Refrigerating Co. v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.

   [5] Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259.

   [6] De Cordova v Vick Chemical Co. (1951) RPC 271.

   [7] Jafferjee v Scarlett (1937) 57 CLR 115.

   [8] Pianotist’s Application (1906) 23 RPC 774.

   [9] I note that the line of authority presented relates to distinctiveness of a trade mark rather than deceptive similarity: Re Application by Adrian Barr (1990) 18 IPR 196, Davis & Co v Stribolt & Co (1889) 6 RPC 207, Eastman Photographic Materials Co Ltd’s Appn (1898) 15 RPC 476, El Canal de las Estrellas trade mark [2000] RPC 291.

   [10] 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.

5. In considering the context in which the goods are to be bought and sold, the Opponent points out that Conti J, in Red Bull Pty Ltd v Sydney Wide Distributors[12], noted that energy drinks and other similar beverages are cheap everyday consumable items which consumers would purchase without close consideration and inspection. In addition, it is well established that trade marks are recalled by general impression rather than accurate detail, see for example the observation of Latham CJ in Jafferjee v Scarlett[13]:

   [I]t is very important to remember that the purchasers in that market will not ordinarily have an opportunity of comparing the two marks side by side. They will compare the actual mark which they see upon goods which are offered to them with the memory of the other mark, which they will retain in a more or less distinct form. They therefore will not be in the same position as that in which the court finds itself when it is endeavouring to determine whether or not they are likely to be deceived.... Such purchasers have not had the opportunity or the occasion to make a precise comparison of the two marks. They will be guided, so far as they are influenced by trade marks at all, by a general recollection or  impression  of the mark which they have seen.

   [12] Red Bull Pty Ltd v Sydney Wide Distributors [2001] FCA 1228, at [62] [71] [72].

   [13] supra.

6. 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. Moreover given the quick and relatively careless purchase of soft drinks and the like, I consider it unlikely that such purchasers would stop to investigate whether any assumed connection between trade marks in fact exists.

7. With regard to the Opponent’s trade mark TORO ROJO and the prominent words TORO LOCO in the Holders’ trade mark, despite differences in their respective meanings I consider it likely that purchasers will mistakenly assume an association. The word TORO is an unusual, prominent and distinctive feature common to both of them. The trade marks also share a common format, being the Spanish or Italian word for ‘bull’ (TORO) followed by an adjectival word also in Spanish. Similarly, TORO ROJO and TORO LOCO share some visual and aural similarity, both containing adjectival words that alternate consonants with the letter and sound of ‘O’. In addition the concept of a Spanish bull, indicated the word TORO, is reinforced by the device present in the Holders’ trade mark. For these reasons I consider that the Holders’ trade mark is visually and conceptually similar to the Opponent’s TORO ROJO trade mark, and consequently that there is a tangible risk that the purchasing public will assume goods sold under each originate from the same source.

8. The Opponent is also the owner of the registered mark CRAZY BULL. It is not necessarily the case that words in a language other than English will be deceptively similar to their English counterparts. However it has been found that where a direct translation exists which is likely to be understood by a significant portion of the Australian market place, use may result in deception or confusion[14]. Both the words TORO and LOCO are likely to be understood by a significant portion of the Australian population, and to be understood as the equivalent of the English words BULL and CRAZY. TORO and LOCO are commonly used in English language movies, television programmes, print media and as part of the names of sports’ teams. Indeed, as the Opponent points out ‘Loco’ is entered in the Oxford Online Dictionary[15] as an informal adjective meaning ‘crazy’. As such, I consider that purchasers are likely to believe that the trade marks TORO LOCO ENERGY DRINK with bull device and CRAZY BULL indicate goods which originate from the same source.

   [14] See for example Vitasoy International Holdings Ltd v Green Spot Company Limited [2008] ATMO 45, in which VITAMILK was found to be deceptively similar to its equivalent in Chinese characters.

   [15] Oxford Dictionaries Online © 2012, Oxford University Press.

9. In summary I am satisfied that the Holders’ trade mark is deceptively similar to the Opponent’s registered trade marks TORO ROJO and CRAZY BULL. The Opponent has therefore discharged the onus upon it to establish at least one ground of opposition. It is not necessary for me to consider its ground of opposition under section 60.

Decision

1. The Opponent has established the ground of opposition under section 44. Accordingly, I refuse protection of IRDA 1305940 – International Registration 1003074 – in respect of all of the goods listed.

Costs

1. The Opponent has sought its costs in this matter. As the Opponent has been successful in its opposition, I award costs against the Holders in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Nicole Worth

Hearing Officer

Trade Marks Hearings

10 February 2012