Red Bull GmbH v Leonard Grout

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 number 2231913 (class 5) - COW & BULL (composite) - in the name of Leonard Grout

Delegate:

Benjamin Goldsworthy

Representation:

Opponent: Lance Scott of Gestalt Law Pty Ltd

Applicant: Anthony Place of Patentable

Decision:

2024 ATMO 97

Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds of opposition under ss 42(b), 44, 60 and 62A pressed – s 44 ground of opposition established – trade mark refused.

Background

1. On 27 November 2021 an application to register a trade mark under the Trade Marks Act 1995 (Cth)[1] was made in the name of Leonard Grout (‘Applicant’), the details of which I extract below:

   Trade mark number: 2231913

   Trade mark:

   (‘Trade Mark’)

   Goods: Class 5: Vitamin Supplements for Human Consumption[2]

   [1] Unless specified otherwise, a reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).

   [2] I note that the specification of goods was subsequently amended; see paragraphs [4] and [6].

2. The Trade Mark was examined, and acceptance was advertised 28 April 2022. On 28 June 2022, Red Bull GmbH (‘Opponent’) filed its Notice of Intention to Oppose. On 27 July 2022, the Opponent filed its Statement of Grounds and Particulars (‘SGP’). On 26 August 2022 the Applicant filed its Notice of Intention to Defend.

3. On 29 November 2022, the Opponent filed its Evidence in Support (‘EIS’) consisting of:

   • a declaration of Jocelyn Wu, paralegal at the Opponent’s law firm Gestalt Law Pty Ltd, dated 29 November 2022, with Annexures JW-1 to JW-5 (‘Wu-1’);
   • a declaration of Chris Feather, Founder and Manager of a business that trades as 98 Gym, dated 29 November 2022, with Annexure CF-1 (‘Feather’); and
   • a declaration of Jennifer A Powers, Intellectual Property Counsel at the Opponent, dated 17 November 2022, with Annexures 1 to 19 (‘Powers-1’).

4. On 14 December 2022 the Applicant requested an amendment to the application to add the following endorsement and amend the goods as follows (bold text indicating additional words added to the specification of goods) (‘Amendments’):

   Endorsement: The following disclaimer has been requested under subsection 74(1): The trade mark background consists of gradients or transitions, and is otherwise plain or clear, as illustrated in the representation on the application.

   It is a condition of registration that, in use, the bovine devices and text elements contained within the trade mark are not rendered in RED or YELLOW (‘Endorsement’).

   Goods: Class 5: Vitamin Supplements for Human Consumption; the aforementioned vitamin supplements being in the form of capsules, tablets and freeze-dried powders; the aforementioned vitamin supplements including an ingredient that is sourced from a bovine organ and/or gland (‘Applicant’s Goods’)

5. On 15 December 2022 the Applicant filed its Evidence in Answer…