Red Bull GmbH v Kamal Khanbabaei General Trading Co LLC

[2012] ATMO 96

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 1338149(32) - BULZAI ENERGY DRINK and DEVICE - filed in the name of Kamal Khanbabaei General Trading Co LLC.

Delegate:

Alison Windsor

Representation:

Opponent:  Benjamin Fitzpatrick of Counsel and Michael Wolnizer of Davies Collison Cave, Patent and Trade Mark Attorneys

Applicant:  Not represented

Decision:

2012 ATMO 96

S52 Opposition – grounds under sections 42(b). 44 and 60 pursued – section 60 ground established – application refused.

Background

1. Kamal Khanbabaei General Trading Co LLC (‘the Applicant’), a company based in Dubai, filed an application to register a trade mark under the provisions of the Trade Marks Act 1995 (‘the Act’).  Details of the application as filed appear below:

Application number:  1338149

Date filed:           23 December 2009

Goods/class:  Energy drinks; mineral and aerated waters; fruit drinks and fruit juices

Trade Mark:     (‘the Trade Mark’)

1. The application was examined as required by section 31 of the Act and when no grounds for rejection were identified it was advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 20 May 2010.

2. On 20 August 2010 Red Bull GmbH (‘the Opponent’) filed a notice of opposition (‘the Notice’) to registration of the application. 

3. The parties filed evidence in support, in answer and in reply, the final declaration from the Opponent being served on 7 February 2012.  Both parties then requested to be heard and the matter was set down for hearing in Canberra on 26 September 2012.  I was delegated by the Registrar to hear the parties on that date.

4. On 17 September 2012 the Opponent filed the written submissions upon which it intended to rely at the hearing.  The Applicant’s representative then advised, on 21 September 2012, that the Applicant would not be providing written submissions for the hearing and neither would it be represented on the day.

5. On 24 September 2012 the Opponent filed an application for permission to serve a copy of further evidence in the matter.  As the hearing was only two days away, I advised the parties that on the day I would take brief submissions on the application prior to hearing the substantive matter.

6. I heard the Opponent on the matter in Canberra on the set date.  Benjamin Fitzpatrick of Counsel appeared for the Opponent in person, instructed by Michael Wolnizer of Davies Collison Cave, Patent and Trade Mark Attorneys, who appeared by video link. 

Application for admission of further evidence

1. The further evidence consists in part of copies of decisions from overseas jurisdictions that were originally nominated as attachments to the statutory declaration of Cheryl Hrvoj which forms part of the Opponent’s evidence in reply.  However, the decisions were inadvertently omitted from the Hrvoj declaration, and were subsequently provided as attachments to a second declaration by Ms Hrvoj which accompanied the application for further evidence.  In addition, three other decisions from overseas jurisdictions were provided as exhibits to that declaration.  The three decisions are not in English and I note that no English translations have been provided for two of them.  Whether or not I admit these decisions, I would be unable to give those without translations any weight at all.

2. Given that the Applicant has been on notice, since at least as early as the evidence in support was served upon it, that the Opponent intended to rely upon decisions issued by the relevant authorities of various overseas jurisdictions, I am satisfied that allowing the application for further evidence will not prejudice the Applicant in any way.  I advised the Opponent at the hearing that this was likely to be my view.  Therefore I have allowed the further evidence into proceedings and shall take it into account as far as it is relevant to the matter at hand.

Evidence provided by the parties

1. The evidence provided by the parties in this matter and which I will take into account in making my decision consists of the following:

   Evidence in Support

   • Affidavit of Dr Volker Viechtbauer made 10 June 2011 with Exhibits 1 to 6
   • Statutory Declaration of Larissa Baxter made 18 July 2011 with Exhibits LB-1 to LB-16

Evidence in Answer

• Statutory Declaration of Anthony James Norris made 18 October 2011 with Exhibits AJN1 to AJN13

Evidence in Reply

• Statutory Declaration of Cheryl Hrvoj made 8 February 2012 with Exhibits CH-1 to CH-10
• Statutory Declaration of Roderick John Brodie made 18 January 2012 with Exhibits RJB-1 to RJB-2

Further Evidence

• Statutory Declaration of Cheryl Hrvoj made 24 September 2012 with Exhibits CH-1 to CH-3

Evidence in support

1. Dr Viechtbauer is General Counsel of the Opponent and provides a history of its development of the goods described in the declaration as the ‘Red Bull Energy Drink’.  He says that the Red Bull Energy Drink was first launched in Austria in 1987 and is sold “under the famous RED BULL® trademark and Red Bull trade dress” which he says are protected in 205 jurisdictions worldwide. 

2. The Red Bull Energy Drink, Dr Viechtbauer states, had been sold for 5 years on the Austrian market before its first international launch in Hungary in 1992 and then in Scotland in 1993.  The large scale international rollout started in 1994 in Germany and the United Kingdom and Dr Viechtbauer says that it still continues today, where the goods are sold in 157 countries.  The goods are distributed in these countries through the Opponent’s wholly-owned subsidiaries or distribution partners.

3. Dr Viechtbauer has provided figures which show that worldwide unit sales of the Red Bull Energy Drink are counted in the billions every year, with unit sales in Australia exceeding 100 million in 2010.  Media expenses, which Dr Viechtbauer says are focused on TV, cinema and radio are very large indeed.  Marketing expenses which include media other than those quoted previously involve expenditure of over €1 billion worldwide per annum for the years 2006 to 2010.  In 2010 in Australia (which I note is after the relevant date) figures of many millions of euros are quoted for media and marketing expenses.

4. Information is also provided in the Viechtbauer declaration about the Opponent as a sponsor and supporter of athletes and sporting events, especially those which are often described as ‘extreme’ sports but including more mainstream events such as Formula One car racing.  The OPponent has also established its own media house which includes its own channels on TV (Red Bull TV), the Web, mobile telecommunications (Red Bull Mobile), in print (Red Bull Bulletin) and has also created a record label (Red Bull Records). 

5. Dr Viechtbauer also states that the Opponent is the applicant and holder of trade marks containing and consisting of the word BULL (without the word RED) including trade marks such as ‘Bull Rush’, ‘Lord Bull’, ‘Bullionaire’ and so on.  He also refers to use of the word ‘bull’ by the Opponent and the public to designate the Opponent’s products, teams and marketing activities.  Examples he provides include referring to the Red Bull Formula 1 racing teams as the ‘Racing Bulls’; the aerobatic pilots and racing planes based in Salzburg but active worldwide being commonly called the ‘Flying Bulls’; and a mixed drink of vodka and Red Bull Energy Drink being commonly called a ‘Vodka Bull’.

6. At paragraph 29 of his declaration Dr Viechtbauer provides information on the market share enjoyed by the Opponent’s energy drinks.  A survey conducted in 2009, he says, found that the Red Bull Energy Drink had at least an 82% share of the energy drink market in Australia (for those drinks sold at drinking establishments such as night clubs and bars).  Market studies in Europe and worldwide have shown a very high recognition of the brand throughout the populations of many countries.  

7. Paragraph 31 of the declaration contains a list of the results of decisions from a wide range of countries and jurisdictions in respect of quite a variety of trade marks which include the word BULL.  Most of the decisions refer to the Opponent’s RED BULL trade mark as ‘well-known’ or ‘famous’.

8. Larissa Baxter is currently the Opponent’s Area Legal Counsel for the Middle East, Africa and the Pacific geographical areas, and was formerly Legal Counsel for Red Bull Australia Pty Limited.  Much of the information she has provided mirrors that of the Viechtbauer declaration and I will not repeat it here. 

9. Ms Baxter states that the Opponent has supplied the Red Bull Energy Drink to sponsored athletes in Australia since April 1996 for promotional purposes.  However private consumption sales of the drink only began in December 1997 and the first commercial sales began in 1999.  The drinks are sold in a variety of outlets including supermarkets, convenience stores, service stations, cafes, restaurants, night clubs and bars. 

10. Ms Baxter has provided a list of Australian athletes sponsored by the Opponent since 1995 at paragraph 28 of her declaration.  The list includes such well known personalities as Mick Fanning (surfing), Casey Stoner (Moto GP), Mark Webber (Formula 1) and Steve Hooker (Pole Vault).  The list of events sponsored or supported by the Opponent provided at the same paragraph in the declaration is very large and includes events such as the Gold Coast Schoolies Week (2006); The Red Bull Air Race in Perth (2008); the FIM Superbike/Supersport World Championships – Phillip Island (2010 – which is after the priority date); as well as references to sponsorship in respect of V8 Supercars, Formula 1 car racing, winter sports, surfing, skateboarding, music events and graffiti art.  

11. Ms Baxter also gives her opinion that because of the claimed reputation of the Opponent’s trade marks including the words ‘red bull’ and the device of a charging bull, deception and confusion is likely to result from registration of the Applicant’s trade mark.  She notes that to the best of her knowledge the Applicant has not sold any of its products in Australia under the Trade Mark.

Evidence in answer

1. Anthony Norris is the Applicant’s Australian representative for the opposition.  His declaration is brief and provides as Exhibits AJN1 to AJN10 copies of registrations of trade marks belonging to the Applicant and which include the word BULZAI from a number of overseas jurisdictions.  Only some of these registrations involve the Trade Mark as applied for in Australia. 

2. Exhibit AJN11 to the Norris declaration consists of a copy of a decision of the Trade Marks Office of Anguilla[1] which found against the Opponent on the question of the similarity of trade marks.  I note that the trade mark applied for in Anguilla is not identical to the Trade Mark. 

   [1] Anguilla is a British overseas territory in the Caribbean with a population of approximately 13500 persons.

3. Exhibit AJN12 is a copy of a decision from the Intellectual Property Office of Georgia which also found against the Opponent in respect of an opposition matter similar to that of the Anguillan matter.

4. Exhibit AJN13 provides photographs of a product promotion showing use of the Applicant’s Bulzai energy drink which took place in the United Arab Emirates in October 2010.  I note that the examples of the goods shown in these photographs do not include the Trade Mark as filed in Australia.

Evidence in Reply

1. Caroline Hrvoj is a solicitor with Davies Collison Cave the firm which is the Opponent’s legal representative in Australia.  Her declaration contains material which goes to demonstrating the state of the Trade Marks Register in respect of trade marks containing the word ‘bull’ and/or images of bulls in relation to energy drinks and alcoholic beverages containing or mixed with energy drinks. 

2. In addition, at Exhibit CH-1 Ms Hrvoj provides copies of published decisions from other jurisdictions in which the Applicant’s trade marks were found to be deceptively similar to some of the Opponent’s prior trade marks, as well as being likely to cause deception and/or confusion among relevant members of the public.  The decisions provided are those from OHIM,[2] Turkey and New Zealand.  Exhibit CH-2 contains a copy of the evidence of two marketing experts which was filed in relation to the New Zealand opposition. 

   [2] Office for Harmonization in the Internal Market which registers Community Trade Marks in the European Union.

3. Ms Hrvoj then goes on to discuss the similarity between the words BULZAI and BULLSEYE.  She notes that the words are phonetically identical and has attached (at Exhibit CH-6) printouts from foreign language dictionaries which render the word BULLSEYE phonetically as ‘bulzai’ in order to assist readers with pronunciation.

4. The second declaration in the evidence in reply is that of Roderick John Brodie.  Professor Brodie is professor of marketing at the University of Auckland and was one of the two marketing experts who provided evidence for the Opponent’s opposition action in New Zealand in relation to the identical trade marks.  Prof Brodie believes that the conclusions he reached in the New Zealand opposition would apply equally to the Australian opposition.  He assesses the likelihood of confusion between the Applicant’s and opponent’s energy drinks as being high in both markets.

Further Evidence

1. As noted previously, the further evidence contains copies of decisions which were inadvertently omitted from the opponent’s evidence in reply.  Translated copies of decisions from the relevant offices in Croatia and Columbia are provided, and a recent decision from the UK Office is also included.  Decisions from Tunisia, Costa Rica and Hungary are provided in their original languages and do not have accompanying translations into English. 

The Notice, Grounds of Opposition and Onus

1. The Notice was couched in very broad terms, nominating almost every ground of opposition provided for by the Act. At the hearing, however, the Opponent pursued only the grounds relevant to sections 42(b), 44 and 60. For completeness I decide that the grounds not pursued at the hearing have not been established.

2. The onus is upon the Opponent to establish at least one ground of opposition on the balance of probabilities.[3]  The time at which the ground of opposition must be established is the date of filing of the application[4] that is, 23 December 2009. 

   [3] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 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].

   [4] 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.

Discussion and Reasons

1. At the hearing Mr Fitzpatrick gave the bulk of his submissions in respect of the issues surrounding section 44 of the Act. However, the evidence provided by the Opponent largely supports a consideration of section 60 and the reputation the Opponent enjoys in its various trade marks. This is the ground under which I will decide this matter.

Section 60 – trade mark similar to trade mark what has acquired a reputation in Australia

1. Section 60 provides:

   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.

2. In order to make out this ground, the Opponent must establish that its trade mark(s) had a reputation in Australia as at 23 December 2009 and that because of that reputation the use of the Trade Mark would be likely to deceive or cause confusion.

3. Concerning ‘reputation’ in McCormick & Company Inc v McCormick [2000] FCA 1335, (2000) 51 IPR 102, Kenny J said, at [81]-[82]:

   [81] 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.

   Compare 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".

   [82] 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?

4. The Opponent owns a large number of registered trade marks in Australia, examples of some of the best known of these trade marks appear below:

1. Over and above its registered trade marks incorporating colours and images, the Opponent has registered a number of plain word trade marks, mostly in respect of energy drinks.  As well as the expected registration of the words ‘red bull’, the Opponent has registered other combinations which incorporate the word ‘bull’ including the following: BLACK BULL, BULL RUSH, VODKA BULL, BAD BULL, POWER BULL, FLYING BULL, GOLDEN BULL, LORD BULL, FUNKY BULL, BULLERO, BULLIONAIRE, BULLIT and SPEEDY BULL.  In addition it has registered the single plain words BULL and RED.

2. The Opponent claims that it promotes its energy drinks in Australia by reference to its various trade marks in television, cinema and radio advertising campaigns.  It also claims extensive marketing and promotion by reference to the trade marks via its website on the internet, via Facebook, YouTube, its own television channel, its own magazine and via mobile telecommunication services.  Paragraph 28 of the Baxter declaration provides a table which lists some 212 events which were sponsored or supported by the Opponent in Australia between the years 2005 and 2011.  Unit sales figures of the Opponent’s energy drinks and promotional and marketing expenditure figures for Australia provided in the same declaration are very large indeed. 

3. I am satisfied that the Opponent had a very strong reputation in Australia as at the Trade Mark’s priority date for its RED BULL word trade marks, as well as those incorporating the images which I have provided at paragraph 37.  It also appears to me that the reputation the Opponent’s trade marks enjoy in the relatively narrow market in which it sells its energy drinks has extended well beyond the words RED BULL and the bull images appearing on its goods to now encompass the word BULL alone and in combination with other indicia.  The question remaining, then, is whether, given this extensive reputation, the Applicant’s proposed use of its trade mark was at the relevant date likely to result in deception or confusion within the Australian market for energy drinks and goods such as alcoholic mixers which include energy drinks.

4. French J, in his assessment of the expression ‘deceptive similarity’ in Woolworths[5], considered the likelihood of deception of confusion between trade marks where, at [50], he said (with references to similarity of trade marks redacted):

   [5] Registrar of Trade Marks v Woolworths Limited [1999] FCA 1020; (1999) 45 IPR 411;

   (1999) AIPC 91-499.

   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 […] 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) […]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] HCA 43; (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.”

1. Given the evidence before me I am satisfied that a Trade Mark which consists of a combination of a word which has a reference to a bull, the colour red[6] and which incorporates the picture of a bovine animal apparently charging towards the viewer is likely to be regarded as belonging to the Opponent’s stable of ‘red bull’ and ‘bull’ trade marks.  I am satisfied that deception or confusion is likely to result from the Applicant’s use of the Trade Mark in Australia.  The ground of opposition under section 60 is thus established.

   [6] I note that there is no colour restriction applied to the Trade Mark.  However, the representation supplied with the application is clearly coloured red, and images from other jurisdictions provided in the evidence are similarly coloured red.

2. As the Opponent has established the section 60 ground of opposition, it is successful and there is no requirement that I consider the other grounds pursued at the Hearing.

Decision

1. The Opponent has established a ground of opposition.  I refuse to register trade mark application 1338149.

Costs

1. The Opponent requested its costs in the event of success.  I award costs against the Applicant according to the official scale.

Alison Windsor

Hearing Officer

Trade Marks Hearings

23 October 2012