Red Bull GmbH v Reschke Pty Ltd

[2010] ATMO 119

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 1200465(32, 33) - BULL TRADER - filed in the name of Reschke Pty Ltd.

Delegate:	Jock McDonagh
Representation:	Opponent: Ben Fitzpatrick of counsel instructed by Davies Collison Cave Patent & Trade Mark Attorneys Applicant: Tim O’Callaghan of Piper Alderman Lawyers
Decision:	2010 ATMO 119 s 52 opposition – ss , 44, 59, & 60  pressed–grounds not established­- applications to proceed to registration.  Costs awarded against the opponent.

Background

1. Reschke Pty Ltd (‘the applicant’) is the applicant for registration of a trade mark, current details of which are:

   Application No:           1200465
   Priority Date:               24 September 2007
   Goods:  Class 32: Beer; alcohol free beverages
     Class 33: Wine; alcoholic beverages (except beer)
   Trade Mark:                BULL TRADER

2. Following examination, the application was accepted on 5 December 2007 for possible registration and advertised as such in the Official Journal of Trade Marks on 24 January 2008.

3. On 24 April 2008, Red Bull GmbH (‘the opponent’) filed a Notice of Opposition under section 52 of the Trade Mark Act 1995 (‘the Act’), objecting to the registration of the trade mark.

4. The parties duly served and filed evidence in support and evidence in answer to the opposition. That evidence is shown below:

Declarant	Status	Date, Known as	Exhibits
Evidence in Support
Cheryl Hrvoj	Solicitor	16.06.2009 Hrvoj	CH-1 to CH-6
Larissa Baxter	Legal Counsel for opponent	21.05.2009	LB-1 to LB-30

1. The opponent asked to be heard and the matter came before me, as a delegate of the Registrar of Trade Marks, for hearing in Canberra on 18 August 2010.  The opponent was represented by Benjamin Fitzpatrick of Counsel, instructed by Davies Collison Cave, Patent & Trade Mark Attorneys. The applicant was represented by Tim O’Callaghan of Piper Alderman Lawyers.

   Discussion

2. The Notice of Opposition cited most grounds of opposition available to the opponent under the Act; however, in submissions the opponent relied only on the grounds of opposition under sections 44, 59, and 60. For the sake of completeness, I find the remaining grounds of opposition as not established.

3. Section 59 of the Act reads as follows:

   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.

4. It is generally acknowledged that filing an application to register a trade mark is prima facie evidence of an intention to use it in respect of the goods and services nominated, at least at the time the application was filed:  Aston v Harlee Manufacturing Co (1960) 103 CLR 391 at 401. Both parties accepted that this was the base line proposition under the ground of opposition.

5. The opponent submitted that when an applicant has been put on notice that intention is in issue, the onus of establishing its intention to use the trade mark shifts to the holder.  Justice Jacobson, in Health World Ltd v Shin-Sun Australia Pty Ltd and Others (2008) 75 IPR 478 stated:

   However, there is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made: Philip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Shanahan at [11.110].

   The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.

6. Mr Fitzpatrick submitted that it follows that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.  Mr O’Callaghan agreed in principle with this proposition.

7. Where the parties were not in agreement was whether or not the opponent, having put the applicant on notice of this ground of opposition, has made a prima facie case of a lack of intention to use the mark.

8. Indeed, the inquiry report in Exhibit CH-5 to Hrvoj, confirms that the applicant is using the trade mark with respect to wines. There is no need for any rebuttal by the applicant with respect to Class 33. Thus the section 59 ground of opposition is only relevant to the Class 32 element of the application. While the actual use with respect to Class 33 does not necessarily mean that the applicant intends to use the mark with respect to Class 32, there needs to be convincing prima facie evidence adduced by the opponent.

9. The evidence upon which the opponent relies is limited to Hrvoj stating that the applicant’s website does not mention “[e]nergy/caffeinated drinks and beer … anywhere on the website” and that a private investigation “has revealed that [the applicant] does not produce, distribute, market or promote any energy drinks or beer products.”

10. The revelation referred to above is in these terms:

    We confirmed with Company representatives that the Company does not produce, distribute, market or promote any beer products and by all accounts has no intention of expanding its operations to include the production and distribution of beer.”

11. References to energy drinks are largely irrelevant, in that there are many other alcohol free beverages encompassed by class 32. There appear to be no investigations made into the production, distribution, marketing or promotion of such alcohol free beverages.

12. More importantly, the unnamed author of the inquiry report in Exhibit CH-5 provides no foundation for the conclusion quoted above. There is no reference to the date of the investigation, to the identity or positions of the “Company representatives, what questions were asked or what answers were obtained.

13. I am not satisfied that the opponent’s evidence makes a prima facie case of lack of intention to use the mark. Therefore, there is no evidentiary onus shift to the applicant. The opponent has not established this ground of opposition.

    Section 44 – deceptive similarity

14. The opponent relied on its registrations 42366 BULL lodged on 5 August 1925 in respect of stout in Class 32, and 934802 BULL lodged on 14 October 2002 in respect of 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) in Class 32.

15. The relevant parts of section 44 of the Act provide:

    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.

16. As stout, beer and wine are goods of the same description by virtue of E & J Gallo Winery v Lion Nathan Australia Pty Ltd[1], and the respective non alcoholic beverages in Class 32 are coterminous, the real issue is whether BULL TRADER is deceptively similar to BULL. Counsel for the opponent did not suggest that substantial identity was in issue.

    [1] (2009) 175 FCR 386, and not disturbed by the High Court in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2010] HCA 15

17. The opponent directed my attention to the definition of deceptive similarity in section 10 of the Act and to the classic test propounded by Windeyer J in Shell Co. of Australia v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 415.

18. My attention was also drawn to the authorities holding that a mark will be found to be deceptively similar to another mark if it takes a prominent and distinct feature of that mark[2], that most persons recall a mark by general impression[3] and that commonality of the idea of a mark was important in such recollection[4].

    [2] Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; De Cordova v Vick Chemical Co. (1951) RPC 271; Saville Perfumery Ltd v June Perfect Ltd (1941) 1B IPR 44; Polaroid Corp. v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498

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

    [4] Jafferjee v Scarlett (1937) 57 CLR 115, per Latham CJ at 121-2.

19. The opponent further submitted that the first portion of a word is by far the most important for assessing the likelihood of confusion[5] and that the assessment of deceptive similarity requires consideration of the use of the respective marks, including the nature of the trade involved[6].

    [5] London Lubricants (1920) Ltd’s Application (1925) 42 RPC 264; Conde Nast Publications Pty Ltd v Taylor (1998) 41 IPR 505

    [6] An Application by the Pianotist Company Ltd for the Registration of a Trade Mark (1906) 23 RPC 774.

20. Counsel for the opponent submitted that by applying these principles, deceptive similarity had been made out, particularly because of the prominent and distinct feature “BULL” of the respective marks.

21. While counsel for the applicant did not disagree with the legal principles to be applied, he did disagree with the application of the principles. In particular, the ideas of the marks were quite different and the long coexistence of several trade marks including the word or prefix “BULL” in Classes 32 and 33 suggested that there was little likelihood of confusion or deception.

22. Having regard to the appropriate tests and to submissions by the parties, and to the evidence in support, I am not satisfied that the applicant’s trade mark is deceptively similar to the opponent’s nominated trade marks.

23. I am satisfied that the differences between the opponent’s BULL trade mark and BULL TRADER, in look, sound and structure are significant.  The opponent has not satisfied me that there is any reasonable likelihood that the BULL TRADER mark will be mistaken for the opponent’s BULL trade marks.

24. In particular, the idea of the applicant’s mark is of the share market, while that of the opponent is, at most, of cattle – certainly bulls.

    Section 60 – use of the mark will be likely to deceive or cause confusion

25. As the application was filed after 23 October 2006, the provisions of section 60 as amended by the Intellectual Property Laws Amendment Act 2006 apply. The section reads:

    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: For priority date see section 12.

26. To satisfy section 60 the opponent must establish, in relation to a nominated trade mark:

    ·    Priority.

    ·    Reputation acquired in Australia before the applicant’s priority date.

    ·    Because of that reputation the use of the applicant’s trade mark would be likely to deceive or cause confusion.

27. There is no longer a need to establish the substantial identity or deceptive similarity of the trade marks to rely upon this ground of opposition, although such findings could be relevant to determining the likelihood of deception or confusion.

28. Counsel for the opponent submitted that the relevant tests for determining the likelihood of deception or confusion involves a notional use of the BULL TRADER trade mark in a normal and fair manner on any goods covered by the application.

29. Counsel for the opponent submitted that the opponent’s evidence establishes a highly significant reputation in its RED BULL trade mark in Australia. That trade mark has featured prominently on the opponent’s energy drink products and associated promotional material since 1997.

30. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick [2000] FCA 1335 by Kenny J at paragraph 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.

    Cf. 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”.

    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?

31. Additionally, the test for proving reputation is that propounded in ConAgra Inc v McCain Foods  (Aust) Pty Ltd (1992) 23 IPR 193 at 234:

    But reputation within the jurisdiction may be proved by a variety of means including advertisements on television, or radio or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum, and that people within the forum (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …

32. 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: McCormick & Company Inc v McCormick (supra) at paragraph 86.

33. Counsel for the opponent pointed to the evidence in Baxter that establishes:

    ·    420 million units of RED BULL energy drink sold in Australia since 2003;

    ·    $45 million spent in Australia on television, radio and cinema advertising;

    ·    $570 million in net sales revenue in Australia 1999 to 2007;

    ·    By 2006, RED BULL had 92.6% market share for energy drinks;

    ·    Extensive promotion in a wide range of sporting events and by athletes; and

    ·    In 2007, 78% of consumers surveyed associated RED BULL with the opponent’s energy products.

34. Mr Fitzpatrick additionally submitted that such was the reputation of RED BULL, that the term “BULL” had acquired its own secondary meaning. “BULL” was used in respect of alcoholic mixed drinks incorporating the opponent’s product; for example “Vodka Bull”.

35. Counsel for the opponent also submitted that the opponent had licensed the use of BULL to be used on beer in Australia and that it had been sold recently at the Red Bull AIR Races in Perth.

36. Counsel for the applicant submitted that I should ignore any of the evidence in Baxter that predates her employment with the opponent (May 2008) on the basis that it is hearsay. I do not intend to take such a course, as Regulation 21.15(8) of Trade Mark Regulations 1995 (‘the Regulations’) provides that the Registrar is not bound by rules of evidence.

37. Mr O’Callaghan also submitted that any reputation the opponent might have in Australia was not likely to deceive or cause confusion because it was specific to energy drinks and no other goods.

38. Mr O’Callaghan also denied that the opponent’s reputation extended to the word “BULL” on the basis that this was mere assertion and unsupported by evidence. Further, there was no evidence to support a licence agreement regarding a beer labeled “BULL” or of any reputation with regard to it as at the priority date.

39. The evidence filed by the opponent is sufficient to infer the necessary reputation in its RED BULL trade mark with respect to energy drinks as at the priority date of the applicant’s trade mark. However, the evidence does not support such a reputation in the term “BULL” for alcoholic beverages generally, or for BULL branded beer.

40. The evidence regarding beer states that the licence was entered “[i]n 2007” at a Perth brewery. The beer label shown in Baxter is a distinctive device.  I cannot be satisfied that there is a reputation established at the priority date.

41. To a very great extent, RED BULL is so well known and recognized as an energy drink that it is unlikely that it would be confused with BULL TRADER. I am not satisfied that this ground of opposition has been made out.

    Decision

42. Section 55 of the Act provides:

    Decision

    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.

43. I have found that the opponent has been unsuccessful under each of the grounds pressed.

44. 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 against this decision, I direct that registration shall not occur until any appeal has been decided or discontinued and that the disposition of the application be in accordance with the Court’s direction or order.

    Costs

45. The applicant is the successful party and is entitled to its costs. Accordingly, I award costs against the opponent, as per Schedule 8 of the Regulations.

    Jock McDonagh
    Hearings Officer
    Trade Marks Hearings
    30 November 2010