Red Bull GmbH v Reschke Pty Ltd

[2004] ATMO 17

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 809023 (33, 35, 42) - CHARGING BULL DEVICE - filed in the name of Reschke Pty Ltd.

Delegate:

Claudia Murray

Representation:

Opponent
Mr David Yates, of Allen Arthur Robinson, Lawyers, Sydney
Applicant
Dr John Emerson, QC, instructed by Mr Tim O'Callaghan of Piper Alderman, Lawyers, Adelaide

Decision:

1. Section 52 Opposition: registration allowed - s 55(b).

2. Costs awarded against opponent.

Background

1. Reschke Pty Ltd (the applicant) filed trade mark application number 809023 on 1 October 1999. The subject trade mark is:

    
   

2. The application was filed in classes 33, 35 and 42 of the International (Nice) Classification of Goods and Services, in respect of:

   Class 33: Alcoholic beverages including wine and spirits

   Class 35: Retail of wines; cellar door sales

   Class 42: Winery services including the provision of food and beverages, including wines, for public consumption

3. No grounds for rejection under the Trade Marks Act 1995 (the Act) were raised against the application during examination. After a small clarification was made to the statement of services for class 42, it was advertised as accepted for registration in the Australian Official Journal of Trade Marks, on 31 August 2000.

4. On 28 February 2001, after obtaining an extension of time to do so, Red Bull GmbH (the opponent) filed notice of opposition to registration of the trade mark. Nine grounds of opposition were listed in the notice.

5. Evidence in support, answer and reply was duly served and filed. At the end of the process, the opponent also elected to serve further evidence. Finally, the parties requested the opposition to be heard. A hearing was held before me, as a delegate of the Registrar of Trade Marks, in Canberra, on 11 December 2003. Mr David Yates, of Allen Arthur Robinson, Lawyers, Sydney, represented the opponent at the hearing. Dr John Emerson, QC, instructed by Mr Tim O'Callaghan of Piper Alderman, Lawyers, Adelaide, represented the applicant. Mr Burke Reschke, one of the applicant's directors, was also present.

   Evidence

   Evidence in support

6. The opponent's evidence in support comprises two declarations. The first declaration, dated 2 July 2001, is by Dietrich Mateschitz. Mr Mateschitz is the opponent's Managing Director, and an Austrian citizen. He gives a brief history of the opponent's sale of RED BULL energy drinks on a world-wide basis. Energy drinks are, typically, carbonated beverages containing taurine and caffeine and are asserted to improve mental alertness, endurance and emotional status. The opponent’s (or its predecessor in business) involvement with its RED BULL trade marks started in 1982 and it now owns trade mark registrations in 180 countries, including Australia. Mr Mateschitz outlines world-wide advertising and revenues for energy drinks sold under the RED BULL trade marks – these amounts are substantial.

7. The second declaration in support of the opposition is by Paul James Devereux who is Corporate Projects Manager and corporate lawyer of Red Bull Australia Pty Ltd and Red Bull New Zealand Limited which are subsidiaries of the opponent. He attests that goods sold under the RED BULL trade mark are sold both internationally, and in Australia, in a ‘slim line’ 250ml can. The goods are generally sold and consumed from the can. This includes when they are purchased from licensed premises, where the drink is the basis of a cocktail known as Bull Rush – a little liquid is poured from the can by bar staff and vodka is added to be consumed from the can.

8. Mr Devereux gives details of Australian trade mark registrations by the opponent of its RED BULL trade marks.  These are:

TM No.	Trade Mark	Filing Date	Class	Statement of Goods/Services
668835	4 Aug 1995	32	Class 32 Mineral and aerated waters and other non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for making beverages
784011	28 Jan 1999	25, 32, 33	Class 25 Clothing, footwear, headgear Class 32 Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages Class 33 Alcoholic beverages (except beers)
792346	27 Apr 1999	1-42	Class 32 Beer, mineral water and water containing carbon dioxide and other non-alcoholic beverages; fruit drinks and fruit juices; syrups and other preparations for use in preparing beverages Class 33 Alcoholic beverages (excluding beers)
828261	20 Mar 2000	25, 32, 33	Class 25 Clothing, footwear, headgear; sportswear, footwear for sports, football boots and studs therefor; non-slipping devices for shoes; corsetry; babies' napkins of textile Class 32 Non-alcoholic beverages including refreshing drinks, energy drinks, milk drinks in this class and isotonic (hyper- and hypotonic) drinks (for use and/or as required by athletes); beer, mineral water and aerated waters, fruit drinks and fruit juices, syrups and other preparations for making beverages as well as effervescent (sherbet) tablets and powders for drinks and non-alcoholic cocktails Class 33 Alcoholic beverages (except beers); hot and mixed alcoholic drinks, including alcoholic energy drinks, mulled wine and mixed drinks containing milk; wines, spirits, and liqueurs; alcoholic preparations for making beverages; spirit or wine-based cocktails and aperitifs; beverages containing wine

1. Use of the RED BULL trade marks in Australia by the opponent was delayed by Australian Government regulatory provisions until at least December 1987, when some of the goods were imported into Australia from New Zealand for private consumption. These goods were, as I understand it, imported for sale by order of individuals in quantities of under 10 litres – total sales under the scheme were in the order of $15,000.

2. Commercial sales of goods bearing the trade mark had occurred in New Zealand for some time before this, and it would appear from the evidence that, by the time that normal commercial sales started in Australia, the RED BULL trade marks had a strong reputation in New Zealand.

3. Normal commercial sales of the drink sold under the trade mark RED BULL started in March 1999 amid large promotional and advertising activity by the opponent or its Australian subsidiary.

4. Promotional and marketing activities relating to the RED BULL trade marks by the opponent have been extensive and include the RED BULL SAUBER PETRONUS Formula 1 racing team, street cars which carry an oversize slim line can bearing the RED BULL trade marks on their roofs, and so forth.

5. The third declaration is support is by David Larcombe Yates, solicitor for the opponent who brings into evidence the proceedings Red Bull Australia Pty Ltd & Red Bull GmbH v Sydneywide Distributors Pty Ltd [2001] FCA 1228 (the ‘LiveWire’ proceedings). However, I do not consider that the facts, as regards the reputation of the RED BULL trade mark, which the opponent wishes me to apply here, are readily transferable to these proceedings. At the commencement of the LiveWire proceedings, the opponent’s RED BULL trade mark had been in use for some three years. By the priority trade of the opposed application, the opponent’s trade mark had been in use for only seven months. Any finding in LiveWire as regards the reputation of the opponent’s trade mark therefore relates to a date which is well after the relevant date in these proceedings.

6. A second declaration by Mr Devereax attests to the opponent’s quality control of the product sold under the opponent’s RED BULL trade marks and its regulation of the use of the opponent’s trade marks by its Australian subsidiary.

7. A third (and confidential) declaration by Mr Devereax brings into evidence the revenue and marketing expenditure details of goods sold under the RED BULL trade mark in Australia and New Zealand.

   Evidence in answer

8. A statutory declaration of Burke Robert Stanley Reschke constitutes the applicant’s evidence in answer. Mr Reschke attests that his family have owned land in the Coonawarra region since 1906 which has been used for rearing beef and, since 1947, as a Hereford beef stud. This stud achieved some fame and reputation and now occupies about 1400 hectares.

9. In 1992, the family decided that it would produce a wine known as Koonara Coonwarra to supplement its beef stud. Labels of this wine are in evidence.

10. Three hectares of land were planted to vineyards by the family in 1989 and by 1998, it was decided to plant and manage further vineyards on the property. Mr Reschke, in devising a trade mark for the wine, decided to draw on the family’s long association with the beef industry. The prototype of the opposed trade mark is one of several devised by Mr Reschke in 1998, doodling with a pen in the company of his mother at the kitchen table. He asserts that it has elements of a cave painting in a modern, stylized design.

11. After some dealing with graphic designers, the applicant settled on the device that constitutes the opposed trade mark – it is substantially the same design that Mr Reschke devised at the kitchen table.

12. The opposed trade mark was used by the opponent from October 1999 on shirts and caps to promote its vineyard venture. The trade mark was used on the applicant’s business cards and on a prospectus from June 2000. The applicant has otherwise incurred substantial costs its promoting this new venture in wines in relation to which the trade mark is, or will be, used.

    Evidence in reply

13. The evidence in reply is a declaration by Nicholas Bryden who is Corporate Counsel of Red Bull Australia Pty Ltd. Mr Bryden describes various of the opponent’s marketing activities. Except for the giving away of t-shirts bearing the trade marks of the opponent in pubs and clubs, these activities all occurred after the priority date of the opposed application.

14. A further declaration by David Yates brings into evidence a copy of the judgment in Red Bull GmbH v Ustov, Inc which were proceedings in the United States District Court, Northern District of Carolina. As the offending trade mark, a copy of which is appended to Mr Yates declaration, is quite different from the opposed trade mark, I do not consider this decision relevant to the issues which are before me. It is a case in which the defendant used, or proposed to use, a colourable copy of the get-up and trade marks on the opponent’s cans in the USA. Such is not the issue here.

15. There are a number of trade declarations (‘the trade declarations’) by those working in the hotel, club and bar industries which are in similar form. These are by Mark Gerber, Darren Hickey, Paddy Maher, Alistair Flower and Attila Toth. They attest to their knowledge, in 2003, of the reputation of the RED BULL trade marks and that, if they saw an alcoholic energy drink bearing the opposed trade mark, they would believe that it was a product released by the opponent.

16. There are various problems with these declarations, the most prominent of which is that the declarants are, as observed by Dr Emerson, not expert witnesses[1]. They all attest to their knowledge of the reputation of the opponent’s trade marks at a date four years after the priority date of the opposed application. Their impressions of the similarity of the trade marks are apparently coloured by the reputation of the opponent’s trade marks at the times that the declarations were made, rather than at the priority date. The declarations also appear to make comparison of the trade marks in the light of the reputation of the opponent’s trade marks which is not the relevant test in section 60 of the Act. It is also irrelevant in terms of section 44, excepting insofar as the doctrine of imperfect recollection might be relevant if the opponent’s trade mark were notorious at the priority date.[2] In section 60, the questions are separately asked, “Are the trade marks deceptively similar?” and “Did the opponent’s trade mark have a reputation at the priority date?” Then the effects of the similarity are considered in the light of the reputation.

    [1] C A Henschke & Co v Rosemount Estates Pty Ltd [2000] FCA 1539

    [2] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411; C A Henschke & Co v Rosemount Estates Pty Ltd [2000

17. On the basis of seven months of public use of the opponent’s trade mark at the priority date, it was obviously not notorious at that time.

18. For these reasons, no weight can be placed on the trade declarations.

    Further evidence

19. A further declaration by Mr Yates brings into evidence various materials referred to in the United States proceedings.

20. Finally, a declaration by Hugh William Fitzsimons, solicitor for the opponent attests to the circumstances which brought the trade declarations into being.

    Grounds of opposition

21. There were two grounds of opposition pursued at the hearing – these were under sections 44 and 60 of the Trade Marks Act 1995.

    Section 44 - substantially identical or deceptively similar trade marks

22. As the application is made in respect of both goods and services, both subsections 44(1) and (2) are relevant. They provide that an application for registration must be rejected if it is substantially identical, or deceptively similar, to another person's trade mark application or registration that has an earlier priority date, and covers goods and services that are similar or closely related to the applicant's goods and services. The definition of "deceptively similar" in section 10 is that "a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion". While subsection 14(2) provides that services are similar to other services if they are the same as, or of the same description as, those other services, the legislation provides no further elaboration upon how services that are "closely related" to particular goods may be determined.

23. It was not seriously contended at the hearing that the goods and services of the applicant are not closely related to those of the opponent’s registrations, or that those registrations, with the exception of trade mark number 828261, do not have priority dates that precede that of the opposed application. The question to be decided here is whether any the opponent's trade marks, subject of registrations numbered 668835, 784011 and 792346, are either substantially identical or deceptively similar to the applicant's trade mark.

24. Mr Yates submitted that the trade marks are substantially identical and drew my attention to the opponent’s perceptions of the strong similarities between the parties’ trade marks:

    ·     Each bull is a drawn image

    ·     Each bull is side on and two dimensional

    ·     The head of each bull is down with the horns pointing out

    ·     The tail of each bull is flicked upwards

    ·     Each bull is leaping forwards

    ·     The proportions of the bulls are similar and placed in approximately the same way.

25. The phrase "substantially identical" as it appears in section 44 was discussed by Windeyer J in The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1961) 109 CLR 407 at 414. His Honour described the test in the following terms:

    In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.

26. On the basis of a side by side comparison, the trade marks of the parties are not substantially identical. One is obviously a realistic representation of a bull; the other is a representation that is stylised and approaches the abstract.

27. Windeyer J went on to say in Shell, at 415:

    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 recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions.

28. And in Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 the question of deceptive similarity was expressed in this way at 658:

    In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same. The effect of spoken description must be considered. If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part. The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.

29. Mr Yates stressed the imperfect recollection of consumers – particularly as it applies to the features in common of the parties’ trade marks he had drawn to my attention in terms of substantial identity. As regards the so-called ‘doctrine of imperfect recollection’ Jafferjee v. Scarlett (1937) 57 CLR 115 applies. The following passage from Jafferjee is particularly relevant:

    Two marks, when placed side by side, may exhibit many and various differences, yet the idea left upon the mind by both may be the same, so that a person acquainted with a mark first registered and not having the two side by side for comparison, might well be deceived if goods were allowed to be impressed with the second mark, into a belief that he was dealing with goods which bore the same mark as that with which he was acquainted.  Take, for example, a mark representing a game of football; another mark may show the players in a different dress, and in very different positions, and yet the idea conveyed by each might be simply a game of football.  It would be too much to expect that persons dealing with trade-marked goods, and relying, as they frequently do, upon the marks, should be able to remember the exact details of the marks upon the goods with which they are in the habit of dealing.

30. However, there are obvious limits on how far the doctrine can be taken. As suggested in the applicant’s evidence, there are pre-existing registrations of trade marks in Class 33 of the image of a bull. For example, trade marks numbered 285392, 425036 and 644896. If there are not limitations on the doctrine of imperfect recollection, the opponent’s use or registration of its own trade marks in the face of these others is deceptive and confusing for the same reasons it argues that the use or registration of the applicant’s trade mark would be.

31. The consideration is not, therefore, one of a consideration only of the similarities between the trade marks, it is a consideration of both the similarities and differences of the trade marks, if honestly and fairly used[3], in all of the circumstances of that use.

    [3] Re Smith Hayden and Co's Application (1946) 63 RPC 97 at 101.8

32. From this perspective the trade marks are not, I believe, deceptively similar. The immediate and lasting impression that I gain from the applicant’s trade mark is that, in its abstract representation of a bull, it is indeed reminiscent of a ‘stone-age’ cave drawing, as Mr Reschke intended it to be. This is a most striking feature of the opposed trade mark and is, in my consideration, likely to be carried away, retained and remembered by the public. It is a work that could be said to represent an abstract essence of all bulls, rather than being a representation of any bull in particular.

1. The opponent's trade marks, in contrast, contain or comprise much more realistic and graphic representations of a particular bull (or bulls) in a life-like and dramatic pose. These representations are quite different from the applicant's trade mark.

2. In this sense, returning to the applicant’s evidence about the state of the market and register, it is arguable that the opponent’s trade marks share more in common with existing registrations than does the opposed trade mark. This is not to say that I consider the opponent’s trade marks to be deceptively similar to any pre-existing registrations of a bull. It is an observation that all of the various representations of bulls, including those of the parties, are quite obviously, to my mind, quite different ways of stating the same thing. Commonality of idea, however, while it may contribute to a finding of deceptive similarity, is not determinative: Sports Cafe Ltd v Registrar of Trade Marks [1998] 1614 FCA (18 December 1998).

3. I find that the applicant and opponent's trade marks are not deceptively similar. Accordingly, the ground of opposition under section 44 has not succeeded.

   Section 60 - trade mark with a reputation in Australia

4. To satisfy section 60, an opponent must demonstrate that, at the time of filing of the opposed application, it had a reputation in a substantially identical or deceptively similar trade mark, such that use of the applicant's trade mark would likely cause the public to be deceived or confused. The opponent's trade mark need not be subject of an application or registration, or used in relation to similar goods or closely related services, in order to be relied upon under this section.

5. I have already found in terms of section 44 that the trade marks of the parties are not substantially identical or deceptively similar. As this is a threshold test under section 60, it follows that the opponent is also unable to establish this ground.

   Decision

6. I have found that the opponent has not succeeded under any of the grounds pursued at the hearing. For completeness, and as I have no basis to be satisfied that the other grounds raised in the notice of opposition have been made out, I find those grounds also to be unsuccessful. Trade mark application number 809023 may therefore proceed to registration one month from the date of this decision. If the Registrar has been served with notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

   Costs

7. The applicant, being successful, is entitled to its costs, which I order at the Official Scale, against the opponent, Red Bull GmbH.

   Claudia Murray
   Hearing Officer
   Trade Marks Hearings
   31 March 2004