Red Bull GmbH v Total Eden Pty Ltd
[2015] ATMO 67
•20 July 2015
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 1519621 (7, 17, 19 & 20) - BUTT HEAD & Device - in the name of Total Eden Pty Ltd
Delegate: Michael Kirov Representation: Opponent: Ben Fitzpatrick of Counsel, instructed by Michael Wolnizer of Davies Collison Cave
Applicant: Shauna Ross of Counsel, instructed by Jacinta Bayard of Bayard LawyersDecision: 2015 ATMO 67
Section 52 opposition: ss 44 and 60 considered – parties’ trade marks not deceptively similar – confusion or deception unlikely due to reputation of Opponent’s trade mark – registration to proceed.Background
1.This is an opposition brought by Red Bull GmbH (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Total Eden Pty Ltd (“the Applicant”):
Application Number: 1519621
Trade Mark: (“the Opposed Mark”)
Filing Date: 12 October 2012
Goods:Class 7: Centrifugal water pumps for domestic purposes; circulating pumps; electric pumps; engine driven water pumps; high pressure pumps; jet pumps for vacuum generation; pumps (other than petrol vending pumps, surgical pumps or air pumps for vehicle tyres); pumps for the extraction of liquids (machines); pumps for use in agriculture (machines); pumps for use in horticulture (machines); shower pumps; submersible electric pumps; submersible pumps; sump pumps; and water pumps for showers
Class 17: Plastic fittings (other than clips) for attachment to tubing
Class 19: Rigid plastic pipes
Class 20: Plastic fittings (clips) for attachment to tubing; drain traps (valves) of plastic; drains (valves) made of plastic; non-metallic regulating valves (other than parts of machines or level controlling in tanks); plastic valves for water pipes; water control valves of plastic; water inlets (valves of plastic) for water pipes; water outlets (valves of plastic) for water pipes; water pipe valves (plastic); water pipe valves of plastic; water regulating valves (plastic) for water pipes; water-pipe valves of plastic
(“the Claimed Goods”)
Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 15 August 2013. The Opponent filed a Notice of Intention to Oppose on 15 October 2013, followed by a Statement of Grounds and Particulars (“SGP”) on 15 November 2013 raising opposition grounds corresponding to ss 42(b), 44 and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 17 December 2013.
I heard the matter as a delegate of the Registrar of Trade Marks on 25 May 2015 in Melbourne. Ben Fitzpatrick of Counsel, instructed by Michael Wolnizer of Davies Collison Cave Intellectual Property appeared for the Opponent. Mr Fitzpatrick’s oral submissions were supplemented by written submissions emailed to both the Applicant’s attorneys and me on 11 May. The Applicant was represented by Shauna Ross of Counsel, instructed by Jacinta Bayard of Bayard Lawyers. Ms Ross’ oral submissions were supplemented by written submissions emailed to the Opponent’s attorneys and me on 18 May.
Grounds of Opposition, Onus and Standard of Proof
4.As mentioned, the SGP lists grounds corresponding to ss 42(b), 44 and 60 of the Act. However some weeks before the hearing the Opponent’s attorneys advised that only the grounds based on ss 44 and 60 would be pressed. To succeed in its opposition the Opponent bears the onus of establishing at least one of these two grounds and I proceed on the basis that the relevant standard of proof required is the ordinary civil standard based on the balance of probabilities.[1]
[1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26].
The date at which the rights of the parties are to be determined is the 12 October 2012 filing date of the opposed application (“the Priority Date”).[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 595.
The Evidence
6.For their evidence the parties rely on the following Declarations or Affidavits:
Evidence in Support
▪ Jennifer A. Powers made on 7 May 2014, with Exhibits 1 to 11
▪ Kathryn Emma Pickering made on 15 May 2014, with Exhibits 1 to 19
▪ Cheryl Hrvoj made on 20 May 2014 (“Hrvoj 1”)
Evidence in Answer
▪ Fabio Ciprian made on 1 September 2014
Evidence in Reply
▪ Cheryl Hrvoj made on 12 November 2014, with Exhibits 1 and 2 (“Hrvoj 2”)
Jennifer Powers is the Opponent’s “Intellectual Property Counsel” based in Austria, while Kathryn Pickering is its “Regional IP Counsel” based in the UAE. Between them they provide comprehensive evidence of the Opponent’s history and activities both globally and in Australia, amongst which I highlight the following matters of particular relevance to the opposition.
The Opponent was incorporated in Austria in the mid-1980s. Its principal product is a non-alcoholic beverage sold under the trade mark RED BULL (“the RED BULL Energy Drink”). The RED BULL Energy Drink was first sold in Austria in 1987 and by the Priority Date was sold in most countries around the world. It became widely available in Australia as from around 1999 and as at the Priority Date was sold in a range of outlets including supermarkets, convenience stores, service stations, cafes, restaurants, night clubs and bars. In self-service type outlets, the RED BULL Energy Drink is presented to consumers either unchilled or on the shelf in refrigerators.
The RED BULL Energy Drink had garnered a very significant share of the relevant beverage market in Australia as at the Priority Date and the evidence discloses impressive sales revenue in this country since its launch here. The product has principally been marketed both here and internationally in “slim-line” 250ml cans. In all cases the cans or other packaging bear the trade dress shown below featuring the (word) trade mark RED BULL (rendered in red) and, with particular relevance to the Opponent’s s 60 ground, a device comprising two red-coloured bulls facing off against the backdrop of a golden disc (“the Colour RED BULL Device”):
For ease of reference the Colour RED BULL Device alone is shown below:
While the device in question is invariably used in the colours indicated above, it is generally registered without reference to particular colours and I will hereafter refer to this “generic” black and white version of the device, shown below, simply as “the RED BULL Device”:
As at the Priority Date the RED BULL Device had been registered in some 176 jurisdictions around the world (usually covering all colours rather than restricted to those of the Colour RED BULL Device). As will be seen, the Opponent relies on its use of the Colour RED BULL Device to underpin its s 60 ground and it relies on its registration(s) for the RED BULL Device (in black and white), not restricted to any particular colours, to underpin its s 44 ground.
Ms Powers refers to several market studies conducted in various European countries and in Israel, which indicate both the RED BULL (word) mark and the RED BULL Device are well known in those countries. Both Ms Powers and Ms Pickering also exhibit copies of decisions from tribunals or courts around the world, including Australia, which have recognized the renown of the marks in the jurisdictions concerned.
The evidence indicates that the Opponent invests a very significant proportion of its worldwide revenues into promotion of the RED BULL Energy Drink and in Australia this includes regular print, TV, radio, cinema and online advertising as well as advertising through social media such as Facebook® and YouTube® and promotion on the Opponent’s websites at < and < Perhaps most importantly in terms of achieving wide recognition for the RED BULL (word) and RED BULL Device trade marks is the very considerable involvement of the Opponent in sponsoring well known athletes, extreme and other sports generally, many of which, albeit usually taking place overseas, are shown on television in Australia. These often involve high profile sporting events such as Formula 1 motor racing, Moto GP motorcycle racing, and the Dakar Rally.
While the above described activity essentially revolves around promotion of the RED BULL Energy Drink, Ms Powers says in her Affidavit under the heading “Brand Extensions” that the Opponent “is not only the manufacturer of the world-famous energy drink, but has meanwhile also acquired significant reputation in the media sector and as the organizer of both cultural and sporting events.” She then briefly mentions some of the Opponent’s other (essentially self-promotional on the face of it) ventures, under the headings “RED BULL Media House”, “RED BULL TV”, “RED BULL MOBILE”, “RED BULL Print Magazine” and “RED BULL Records”.
Between 1999 and 2014 the Opponent also granted some 460 licenses to third parties around the world to produce merchandise featuring the RED BULL word mark and/or the RED BULL Device. Ms Powers says, “Merchandising articles include model cars, model planes, video games, sunglasses, stationery, luggage, clothing, ski helmets and mobile phone covers.” In Hvroj 2 Cheryl Hrvoj, the Opponent’s Australian attorney, shows examples of promotional use in Australia of the two marks on items such as plastic ice buckets and can holders and examples of “fan’s use” on custom made items such as high heeled shoes and various car parts.
Turning to the Applicant, Fabio Ciprian is a graphic designer in the Applicant’s employ, who says that he designed the device element of the Opposed Mark in 2001 and that the mark has been in continuous use for relevant goods since then. It is convenient here to set out Mr Ciprian’s declaration in full:
1. In 2001, Plastic Plumbing Supplies P/L and our fabrication division, P.C. Ridgeway & Co.,[3] purchased a Pipe Butt-Welding Machine and begun producing a range of fabricated Polethylene plumbing fittings using the “Butt-weld fusion process” which produces exceptionally strong welds.
[3] Mr Ciprian does not explain the relationship between the Applicant and Plastic Plumbing Supplies P/L or P.C. Ridgeway & Co., but this is not significant as far as my decision is concerned.
2. John Pandelis, the marketing manager at the time, decided these fittings would be best marketed with a brand name and logo.
3. “Butt-Head” was the name John Pandelis had decided on and as In-house Graphic Designer I was given the task of creating the visual identity for the new brand name. The brief was to demonstrate visually the strength of these new fittings.
4. The brain-storming process led to the idea of the head butting which is associated with horned male animals. e.g. rams, goats, bulls. The strongest of these animals is the bull which would be the most appropriate to convey the strength of our fittings.
5. Visually, the boldest of these images was to show only the bulls heads in a tight, interlocked head butt which relates directly to the Butt-weld fusion process used to fabricate our new fittings.
6. Red which is a colour traditionally associated with bulls and bullfighting was chosen in combination with black to add further boldness to the design. [As shown on the left below]
7. In more recent years the black was dropped to simplify the design so you have the Butt-Head logo used on our PVC Fittings today [being the Opposed Mark, shown on the right below]
8. Having had a closer look at [the RED BULL Device relied on by the Opponent] for this statement , I see that Red Bulls logo has 2 complete bulls bodies which are facing off one another with a sun or moon in between them with a chequered blue and white background. The Butt-Head logo has only 2 bulls heads involved and they’re in a horns locked head butt.
9. In my honest opinion, I don’t believe the market we are targeting with our range of Butt-Head fittings (plumbers, tradesmen and handymen) could ever confuse Butt-head plumbing fittings in classes 7, 17, 19 and 20, centrifugal water pumps and plastic pipes with the Red Bull energy drink.
Discussion
Section 44
18.The ground based on s 44 is particularised in the SGP as follows:
The [Opposed] Mark is substantially identical with or deceptively similar to the following trade marks, which have an earlier date of priority than the Application and which are registered or applied for with respect to goods which are the same or are of the same description as the goods covered by the Application and, therefore, registration of the Application would be contrary to Section 44 of the Act and/or Regulation 4.15A of the Regulations. The [Opposed] Mark has not been used by the Applicant to satisfy the requirements of Section 44(3) and/or 44(4) and/or 4.15A(3) and/or 4.15A(5).
The SGP then identifies four of the Opponent’s registrations for marks featuring the RED BULL Device or, in one case, the head of a single bull. At the hearing Mr Fitzpatrick limited his submissions on the s 44 ground to what are on the face of it the most relevant of these registrations, being registrations 792346 and 1258052 both for the RED BULL Device (“the s 44 Registrations”). The s 44 Registrations have priority dates in 1999 and 2007 respectively, with registration 792346 covering an extremely wide range of goods and services in all Classes from 1 to 42 and likewise registration 1258052 covering all Classes from 1 to 45 except 25, 28, 32, 41 and 43. Details of the registrations’ Class 7, 17, 19 and 20 specifications are set out in the table below:
Trade Mark
Goods
792346
Class 7: Machines and machine tools; motors (excluding motors for land vehicles); clutches and equipment for power transmission (excluding those for land vehicles); agricultural equipment; egg hatching equipment
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these in so far as they are not included under other classes; goods made from artificial fabrics (semi-finished goods); sealing, packaging materials of rubber or plastics and insulating material; flexible tubing (not made from metal)
Class 19: Construction material (not made from metal); tubes (not made from metal) for construction purposes; asphalt, tar and bitumen; transportable buildings (not made from metal); monuments (not made from metal)
Class 20: Furniture, mirrors, picture frames, goods (in so far as they are not included under other classes) made of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, tortoise shell, amber, mother-of-pearl, sepiolite and substitutes for these or made of plastic
1258052
Class 7: Machines, including filling machines, lifts (other than ski-lifts), excavators, construction machines, bulldozers, printing machines, electric kitchen appliances for chopping, grinding, pressing, stirring, labellers, mincers, belt conveyors, fans (other than hand-operated), electric generators, current generators and alternators, lifting apparatus other than hand-operated, cranes, milking machines, sewing machines, paper machines, polishing machines (other than for household purposes), presses other than hand-operated, trueing machines, industrial cutters, welding machines, textile machines, packing machines, rolling mills, dishwashers, washing machines, shredders; machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); silencers; agricultural implements other than hand-operated; agricultural machines; incubators for eggs; air brushes for applying color
Class 17: Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials (included in this class); plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal; plastic film (other than for wrapping); insulating paints and lacquers; insulating refractory materials
Class 19: Building materials (non-metallic); non-metallic rigid pipes for building; refractory construction materials, not of metal; asphalt, pitch and bitumen; transportable and non-transportable buildings (not of metal); monuments (not of metal); decorative objects and works of art of stone, concrete or marble; signaling panels, non-luminous, non-mechanical and not of metal; gates (not of metal)
Class 20: Furniture, mirrors, picture frames; furniture and tables made of plastic or metal; indoor window blinds; goods (included in this class) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics; works of art and decorative objects of wood, wax, plaster or plastic, nameplates, not of metal, garment bags, coat hangers, stoppers for bottles, key boards for hanging keys; pegs of plastic; display boards and signboards of wood or plastic; flagpoles; packaging containers of plastic; containers, not of metal, for liquid fuel
Only s 44(1) of the Act is relevant in this case and this is set out below:
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.As both Mr Fitzpatrick and Ms Ross acknowledged, the priority dates of the s 44 Registrations being earlier than the Priority Date, it is sufficient for success under s 44(1) if the Opponent establishes on the balance of probabilities that:
• the opposed application covers “similar goods”[4] to those covered by one or both of the s 44 Registrations; and
[4] As defined in s 14(1) of the Act, namely the same goods and/or goods “of the same description”.
• the Opposed Mark is “deceptively similar”[5] to the RED BULL Device.
[5] As defined in s 10 of the Act.
Similar Goods
22.In arguing that the Claimed Goods were not similar to those of the s 44 Registrations, Ms Ross submitted:
It is apparent that the goods for which registration of the Opposed Mark is sought is in the nature of pumps and plastic ancillary goods. The [s 44 Registrations] on the other hand, are not focussed on pumps and goods ancillary goods to those pumps and include many goods that are made of a material other than plastic.
Notwithstanding this submission I agree with Mr Fitzpatrick that the Claimed Goods are, as he put it, “essentially coterminous” with the goods in Classes 7, 17, 19 and 20 covered by the s 44 Registrations and set out above. The unqualified word “machines” in the Class 7 specification of the s 44 Registrations, for example, would on the face of it embrace all the various pumps covered by the Class 7 specification of the opposed application. I believe similar observations can be made as between the Class 17, 19, and 20 specifications of the parties’ marks.
I will accordingly consider the issue of whether the Opposed Mark is deceptively similar to the RED BULL Device on the basis that both trade marks might in principle be used for essentially identical goods in Classes 7, 17, 19 and 20.
Deceptively Similar
25.As both Counsel noted, s 10 of the Act provides 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.” The marks under comparison should not be looked at side by side and the possible imperfect recollection of the RED BULL Device by consumers of the Claimed Goods when they encounter the Opposed Mark should in principle be given due weight. In this regard both Counsel noted that guidance in assessing deceptive similarity is generally found in the words of Windeyer J at first instance in Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (“Shell”), where his Honour said:[6]
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 [RED BULL Device] that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the [Opposed Mark].
[6] (1961) 109 CLR 407 at 415; (1963) 1B IPR 523 at 529; See also Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658.
Both Counsel also referred to the well known words of Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd:[7]
…it is sufficient if the result of user of the mark will be that a number of persons will be caused to wonder whether it might not be the case that the two products came from the same source. It is enough if the ordinary person entertains reasonable doubt. In considering the probability of deception, all the surrounding circumstances have to be taken into consideration. (This includes the circumstances in which the marks will be used, the circumstances in which the goods will be bought and sold, and the character of the probable purchasers of the goods) Jafferjee v Scarlett (1937) 57 CLR 115, at p 120).
[7] (1954) 91 CLR 592 at 595.
In further elucidating the law relevant to the s 44 ground, Mr Fitzpatrick submitted:
A mark will be found to be deceptively similar to another mark if it takes a prominent and distinct feature of that mark. Seven-Up Co v Bubble Up Co. Inc. (1987) 9 IPR 259; De Cordova v Vick Chemical Co (1951) 68 RPC 103; 1b IPR 496; Saville Perfumery Ltd v June Perfect Ltd (1941) 58 RPC 147; 1b IPR 440; Poloroid Corp v Sole Pty Ltd [1981] 1 NSWLR 491 at 497-498; Wolverine World Wide, Inc v Khoda Ali Ahmed [2008] ATMO 93 (27 November 2008).
The commonality of the idea in the mark was discussed in Jafferjee v Scarlett (1937) 57 CLR 115, where Latham CJ stated, at page 121-122:
“Two marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same; so that a person acquainted with the mark first registered, and not having the two side by side for comparison, might well be deceived, if the 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.”
In De Cordova v Vick Chemical Co,[8] in finding that the marks “VAPORUB” and “KARSOTE VAPOUR RUB” were deceptively similar, Lord Radcliffe stated that:
[8] De Cordova v Vick Chemical Co (1951) 68 RPC 103 at 106; 1B IPR 496 at 499.
“In most persons the eye is not an accurate recorder of visual detail, and marks are remembered rather by general impression or by some significant detail than by any photographic recollection of the whole.”
Recently, in Tivo at [100],[9] Dodds-Streeton J restated the Full Federal Court’s reiteration in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1 at [77] of the House of Lords unanimous approval in Aristoc v Rysta Ltd [1945] AC 68 of the principle that the court must allow for consumers who know only of one of the marks and have an “imperfect recollection” of it when encountering the other trade mark, and that little assistance is to be gained from meticulous comparison.
…
At [122] her Honour approved the principle by Whitford J in Re Frigiking Trade Mark [1973] RPC 739 that:
“…where a distinctive mark or a highly distinctive part of a mark was used with an addition or substitution, consumers might think that the new mark indicated the same source of origin as the old mark.”
The determination as to whether or not marks are deceptively similar to each other requires consideration of the nature [of] the goods involved, including the circumstances of their sale and the nature of the consumers. See Pianotist’s Application (1906) 23 RPC 774 at 777 per Parker J; Conde Nast Publications v Taylor [1998] 864 FCA at p510.
[9] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (19 March 2012).
With that as general background to his further submissions, Mr Fitzpatrick went on to highlight the following about the parties’ marks:
The Opposed Mark features the silhouette of two bulls facing each other (a double charging bull device) and appears on the register in a dominant red colour;
The impression based on the recollection that a person would have from the Opposed Mark is of two head butting bulls, together with the colour red. These are the key features – the main idea – of the [RED BULL Device];
These features are not a descriptive term or a laudatory term in relation to the claimed goods. They are highly distinctive. The public would have no reason to expect these to be used in relation to such products other than to distinguish them from the products of other traders. There is no legitimate reason why a trader in class 17, 19 and 20 goods would select this combination of features. This is reflected in the Register. Aside from the Opposed Mark, the registered marks in classes 7, 17, 19 and 20 that have these features are those of the Opponent;
The words “Butt Head” in the Opposed Mark in fact reinforce the central concept of interlocking bulls and therefore add to the risk of confusion;
The claimed goods encompass low priced items that would often be purchased by consumers at hardware stores. In this setting, close visual inspection or enquiry would not be expected; and
In the circumstances of the sale of the goods, due to the similarity of the overall impression between the [RED BULL Device] and the impression created by the Opposed Mark, and taking into account imperfect recollection, there is a real and tangible danger that an ordinary member of the public would, at the very least, be caused to wonder whether the [Claimed Goods] were those of the Opponent, or whether the Applicant might be associated with the Opponent.
In her submissions in response, Ms Ross largely concurred with Mr Fitzpatrick’s analysis of the applicable legal principles set out above. She emphasized in addition that where device marks (such as the Opposed Mark) also contain words by which the relevant goods are likely to be referred, “similarities of sound and aural impression are important.”[10] In this regard she submitted:
Notably, unlike the Opposed Mark, there are no words that form part of the [RED BULL Device]. It is likely that consumers will refer to the goods bearing the Opposed Mark by the words BUTT HEAD given that they are the only words contained in the Opposed Mark. This aural dissimilarity is a vital part of the proper analysis for the purposes of deceptive similarity.[11]
[Original footnotes retained]
[10] Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (“Mars”) (2009) 81 IPR 354 at 375 [95] per Perram J, (upheld on appeal in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCAFC 174; (2010) 84 IPR 12 at 18 [30]; Crazy Ron's Communications Pty Limited v Mobileworld Communications Pty Limited (“Crazy Ron's”) [2004] FCAFC 196; (2004) 61 IPR 212 per Moore, Sackville and Emmett JJ at 228 [75].
[11] Mars at 375 [95]; Crazy Ron's at 228 [75].
As discussed further below, I accept that the very significant commercial success of the RED BULL Energy Drink and the extent of the Opponent’s marketing and promotional activities revolving around it do indicate the RED BULL Device enjoyed the “massive” (to use Mr Fitzpatrick’s assessment) reputation the Opponent claims for it as at the Priority Date. Anticipating this, Ms Ross further submitted that this ought in principle reduce the risk of confusion or deception arising between the parties’ marks, because it was likely to reduce “imperfect recollection” of the RED BULL Device:
The Opponent’s submissions and evidence are centrally focussed upon the asserted “massive reputation” enjoyed by the [RED BULL Device].[12]
If the Delegate is satisfied that the [RED BULL Device is] notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with [it] and with use in relation to particular goods or services[13] that reputation of the Opponent in the [RED BULL Device] is a relevant consideration in assessing deceptive similarity. Such a reputation, in the Applicant’s submission, hinders rather than helps the Opponent in establishing that the Opposed Mark and the [RED BULL Device] are deceptively similar. The reputation enjoyed by the Opponent tends to suggest against any likelihood of deception or confusion.
A similar conclusion was reached by Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; 81 IPR 354 at [96]-[97] in which his Honour observed as follows:
[96] … A corollary appears to be that in assessing the notion of a consumer’s imperfect recollection of a mark, the fact that a mark is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and its use in relation to particular goods or services is a relevant consideration: Crazy Ron’s at 232-233 [90].
[97] … The application of these principles is, so it seems to me, relatively straightforward. The Maltesers marks are very famous. Consumers generally must be taken to be familiar with them. That is relevant to assessing a consumer’s imperfect recollection of the mark. So viewed, a comparison between the impression held in the consumer’s mind and the direct impression of Sweet Rewards’ mark is one which, in this case at least, occurs in a context in which the chances of the average consumer having forgotten the Maltesers mark are vanishingly small.
The Applicant submits that in assessing a consumer’s imperfect recollection of the Opposed Mark, the chances of the “average consumer having forgotten the [RED BULL Device] are vanishingly small”.
[Original footnotes retained]
[12] Opponent’s submissions, paras [32]-[80].
[13] Louis Vuitton Malletier v Sonya Valentine Pty Ltd [2013] FCA 933 at [28]–[34] referring to CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at 62-63 [45]; Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; (1999) 93 FCR 365 at 395 [105]; Bob Jane Corporation Pty Ltd v ACN 149 801 141 Pty Ltd [2013] FCA 1255 at [119]; 97 ACSR 127 per Besanko J.
Ms Ross accordingly challenged the relevance of Mr Fitzpatrick’s above quoted submission that, at least in cases where the risk of imperfect recollection of the earlier mark is considered low, “little assistance is to be gained from meticulous comparison.” On the contrary, she submitted:
What is apparent from a review of the recent cases involving an assessment of deceptive similarity is that the Courts routinely engage in an exercise of a close and careful scrutiny of the various elements that together form the trade marks in suit.
She referred in particular to the recent judgments of Bromberg J and Robertson J respectively in REA Group Ltd v Real Estate 1 Ltd[14] (“REA Group”) and Adidas AG v Pacific Brands Footwear Pty Ltd (No 3)[15] (“Adidas”), submitting that:
[These cases] show that a close comparison needs to be, and is, undertaken by the Courts in order to assess deceptive similarity. Such an assessment is appropriate in the present case.
[14] [2013] FCA 559; 102 IPR 1; 217 FCR 327 at [232]-[234].
[15] [2013] FCA 905; 103 IPR 521 at [261], [270]-[271], [279] and [298].
In this regard she was critical of Mr Fitzpatrick’s above quoted analysis of the parties’ marks, arguing that it:
…fails to note prominent and distinctive features of the Opposed Mark. Instead the Opponent focuses on the one part of the Opposed Mark that the Opponent considers assists its case.
The Opposed Mark is comprised of the following features:
(a) The words BUTT and HEAD in block lettering;
(b) A two tone diamond device separating those two words;
(c) Two bull heads locked at the horns with details such as the eyes, nostrils and mouth clearly visible;
(d) Triangular shapes of various sizes on the left and right hand sides of the Opposed Mark;
(e) All of the above bounded by a rectangular shape; and
(f) Two tone with a darker background and lighter foreground.
The [RED BULL Device] on the other hand [is] very different. [It is] comprised of the following features:
(a) The image of two bulls (not just the heads) charging (not locked at the horns) with no facial detail visible (cf paragraph (c) above);
(b)Circular device behind the two bulls; and
(c) The bulls appear in a darker colour and the background is lighter (cf paragraph (f) above).
I note in passing that Ms Ross refers to contrasting shades and colours in the parties’ marks, but does not talk about any specific colours. As mentioned, Mr Fitzpatrick had pointed out in his above quoted submissions that the Opposed Mark “appears on the register in a dominant red colour”, arguing that:
The impression based on the recollection that a person would have from the Opposed Mark is of two head butting bulls, together with the colour red. These are the key features – the main idea – of the [Colour RED BULL Device].
Both Counsel nevertheless recognized that although the Opposed Mark as filed is indeed represented in the colours red and white (as shown in paragraph 1 above), the opposed application itself does not bear an endorsement specifically limiting any part of the mark to a particular colour or colours. Conversely, while the RED BULL Device may invariably be used in the colours of the Colour RED BULL Device, the representation subject of the s 44 Registrations is not limited to any particular colour or colours. That said, the distinction is not significant as far as my decision is concerned. The fact that each parties’ mark might in principle feature the colour red is a matter I would need to take into account for s 44 purposes in any event. I do nevertheless note that in virtually all of the examples of the RED BULL Device in use in the Opponent’s evidence the mark is in fact shown in the colours of the Colour RED BULL Device, effectively dominated by the image of two red coloured bulls facing off. For its part, as at September 2014 (when the Ciprian declaration was made) the Opposed Mark was apparently used in the same colours as filed and, (in addition to the prominent elements BUTT۰HEAD), the mark is dominated by the interlocking heads (only) of two white coloured bulls, albeit against a red background.
Having considered Counsels’ submissions my finding is that the Opposed Mark is not deceptively similar to the RED BULL Device. In this regard I do not agree with Mr Fitzpatrick’s suggestion that:
There is no legitimate reason why a trader in class 17, 19 and 20 goods would select this combination of [two head butting bulls, together with the colour red]. This is reflected in the Register. Aside from the Opposed Mark, the registered marks in classes 7, 17, 19 and 20 that have these features are those of the Opponent.
Mr Ciprian has provided a detailed account of why the Applicant chose its mark back in 2001, stating that it was intended to convey the strength of the Opponent’s “butt-welded” plumbing fittings, and there is nothing before me to suggest this account should be doubted. Nor in any event do I think it could reasonably be said that because the RED BULL Energy Drink and its associated branding (including the RED BULL Device) were very well known as at the Priority Date, (which I accept), this necessarily casts doubt on the bona fides of all other traders who adopt bull devices or that it should preclude such traders in Class 7, 17, 19 or 20 goods from registering marks of this kind.
Moreover I agree with Ms Ross’ submission, (citing REA Group and Adidas as examples), that:
Just because an impugned mark contains the whole of, or a prominent and distinct feature of, a prior mark does not inevitably result in a finding of deceptive similarity. It is necessary to consider the marks as a whole (visually and aurally) and all surrounding circumstances.
As indicated, what I need to consider are the nature of the Claimed Goods, (being, essentially, pumps of various kinds, pipes and tubes, and valves and fittings therefor), and the nature of the probable purchasers of such goods, (whom Mr Fitzpatrick characterized broadly as “consumers at hardware stores”), and then to weigh up whether the similarity between the Opposed Mark and the RED BULL Device as wholes is such that a significant or substantial number of consumers of this kind are likely to be deceived or confused as to the origin of the goods.
In my view, the risk of such deception or confusion is low. Whether or not they “encompass low priced items”, as Mr Fitzpatrick submitted, the Claimed Goods are obviously not everyday consumer items and are not likely to be purchased on impulse. I think the purchasers of such goods are likely to take due care in their selection and I would disagree with Mr Fitzpatrick’s submission that “close visual inspection or enquiry would not be expected.”
Nor do I think the parties’ marks could necessarily be said to share, as Mr Fitzpatrick put it, a “commonality of idea”, merely because the RED BULL Device features two bulls facing off and the Opposed Mark features the heads of two bulls with interlocking horns. To the extent that the Opposed Mark does convey a similar idea to that of the Opponent’s mark in the context of the relevant goods, this would not of itself dictate a finding of deceptive similarity in any event. In concluding the trade mark “Rainmaster” was not deceptively similar to the registered mark “Rain King”, (where both marks were used or proposed for use in connection with water sprinklers), the High Court noted in Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd[16] that any similarity in the idea conveyed was something that might be taken into account when the marks being compared otherwise “really looked alike or sounded alike”. Here the parties’ marks do not otherwise look alike in my view, for all the reasons identified by Ms Ross and set out in paragraph 33 above. Nor indeed could the marks be said to sound alike given, as Ms Ross also highlighted, the Opposed Mark features words by which I agree the Claimed Goods are likely to be referred, and the RED BULL Device does not.
[16] (1952) 86 CLR 536 at 539.
I mention that I have reached the conclusion that the Opposed Mark is not deceptively similar to the RED BULL Device based on what might be characterized as an “orthodox s 44 analysis”, that is without taking into account the fact that, as the evidence shows, the Colour RED BULL Device had enjoyed considerable use and had garnered a considerable reputation in Australia as at the Priority Date. In this regard I note Mr Fitzpatrick did not seek to rely on, nor indeed did he mention, this use and reputation in his submissions on deceptive similarity under the Opponent’s s 44 ground. I do nevertheless recognize that the Full Federal Court (French and Tamberlin JJ; Branson J dissenting) in Registrar of Trade Marks v Woolworths Ltd[17] (“Woolworths”) expressly approved the taking of reputation into account when assessing deceptive similarity under s 44 in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them.”[18]
[17] (1999) 45 IPR 411; 93 FCR 365.
[18] Woolworths (op. cit.), per French J at [61].
It is moreover the case, as Ms Ross mentioned, that various court decisions since Woolworths have indicated the fame of a mark may be relevant to how faithfully it is recollected.[19] However, fame of the sort that might I think fairly be claimed for the Colour RED BULL Device is, as she pointed out, often seen as a factor likely to lessen the risk of deception or confusion arising due to imperfect recollection. Such was the case in Woolworths itself, where the Court did not consider the trade mark WOOLWORTHS METRO to be deceptively similar to the mark METRO (Stylised) in view of the “notorious familiarity” amongst Australian consumers of the name “Woolworths”.
[19] See for example CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 at [52]; Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212 at [90]; Kimberley-Clark Worldwide, Inc v Goulimis (2008) 78 IPR 612 at [43]; Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354, per Perram J at [96]-[97].
As with Perram J’s assessment of the Maltesers trade marks as quoted in paragraph 30 above, I am satisfied the Colour RED BULL Device too is “very famous” and that “consumers generally must be taken to be familiar with [it].” However, particularly in view of the many differences between the parties’ marks, like the Court in Woolworths and like Perram J in the Maltesers case, I think in the present case that this familiarity is, as Ms Ross submitted, if anything likely to lessen, rather than heighten, the risk of relevant deception or confusion.
In summary, the Opponent’s arguments have not satisfied me that a person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the Claimed Goods come from the Opponent merely because the Opposed Mark contains a representation of the interlocking heads of two bulls, whether or not the Opposed Mark is used featuring red as its dominant background colour and whether or not the undoubted notoriety of the Colour RED BULL Device is taken into account. To establish deceptive similarity the Opponent must show there is a real tangible danger of deception or confusion occurring amongst a significant or substantial number of relevant consumers. A mere possibility is not sufficient. I note in this regard that despite the Opposed Mark having apparently been in use since 2001, the Opponent has not mentioned in its evidence any instances of actual confusion or deception that may have caused me to reach a different conclusion.
The Opponent has accordingly not established its ground of opposition under s 44.
Section 60
47.The ground based on s 44 is particularised in the SGP as follows:
The Opponent sells an energy drink under the [Colour] RED BULL [Device]. The Opponent commenced selling its energy drink internationally in 1987 and in Australia in 1997. The Opponent is the largest energy drink manufacturer in the world and has extensively promoted its energy drink in Australia and internationally under the [Colour] RED BULL [Device]. The combination of these brand elements has been described as the “gestalt” of the RED BULL brand. As a result of the Opponent’s extensive use, the Opponent has acquired a substantial and valuable reputation in the gestalt and in the individual brand elements. This substantial and valuable reputation was recognised by the Federal Court in the LiveWire cases (Red Bull Australia Pty Ltd v Sydneywide Distributors Pty Ltd (2001) 53 IPR 481; Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 55 IPR 354).
The [Colour] RED BULL [Device is] used in relation to an extensive range of promotional material but also ancillary materials such as fridges, vending machines, serving trays, fridge stands, case stackers, display stands etc.
The [Opposed Mark] includes a double charging bull device in red colour.
In view of the prior reputation in the [Colour] RED BULL [Device] acquired by the Opponent, use of the [Opposed] Mark will be likely to deceive or cause confusion.
Section 60 of the Act itself is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
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.
As mentioned, to underpin this ground the Opponent relies on the reputation of the Colour RED BULL Device, concerning which Mr Fitzpatrick said:
By virtue of massive use and promotion the Opponent has acquired a substantial reputation in its trade dress.
A dominant and consistent feature of the Red Bull trade dress is the [Colour RED BULL Device]. The Opponent has established a massive reputation in its [Colour RED BULL Device] both in Australia and globally. This reputation has been developed not merely through extensive product sales, but through a sophisticated and extensive marketing project that has made Red Bull one of the world’s top 100 brands and the fourth most valuable soft drink brand worldwide.
As indicated above in connection with the Opponent’s s 44 ground, based on the evidence and based on my own knowledge as a consumer I accept Mr Fitzpatrick’s above assessment and I accept that, as at the Priority Date, the mark in question had the kind of reputation in Australia contemplated by s 60. The issue for determination, then, is whether in light of that reputation use of the Opposed Mark for the Claimed Goods would be likely to deceive or cause confusion. As effectively foreshadowed in the above discussion on the significance of the reputation of the Colour RED BULL Device in the context of s 44, I am not satisfied it would.
In this regard I essentially agree, once again, with Ms Ross’ submissions on the issue. While she was prepared to recognize the significant use the Colour RED BULL Device had enjoyed in Australia in connection with the RED BULL Energy Drink and the Opponent’s high profile sponsorship activities, she argued that relevant deception or confusion was unlikely because, inter alia, of the following two things.
Firstly, she again pointed to “the immediately obvious visual and aural differences between the marks.” Ms Ross’ submissions on the various differences between the parties’ marks when considered as wholes, with which I concur, were set out in paragraph 33 above. It was these many differences that led me to conclude the Opposed Mark was not “deceptively similar” to the RED BULL Device in terms of s 44 of the Act, whether or not I also took into account the fact that the Opponent’s device was invariably used in the colours of the Colour RED BULL Device and had been used in that manner to such an extent that consumers generally must be taken to be familiar with it.
Secondly, she pointed out that given the kind of use the Colour RED BULL Device had enjoyed, as disclosed in the Opponent’s evidence, its reputation would on the face of it be overwhelmingly associated in the minds of consumers with the RED BULL Energy Drink and/or with the Opponent’s sports and event sponsorship rather than with goods such as pumps, pipes, fittings and valves in Classes 7, 17, 19 or 20. The Claimed Goods were simply so different from the goods or activities for which the Opponent and its trade marks were known that consumers of the Applicant’s goods were unlikely to perceive a relevant connection with the Opponent or the Colour RED BULL Device.
As she did in connection with the s 44 ground, Ms Ross also again highlighted that, while not of itself fatal to the Opponent’s case, the absence of any instances of actual confusion indicated in the Opponent’s evidence was a relevant consideration.
To conclude, given the differences between the Opposed Mark and the Colour RED BULL Device when considered as wholes and given the obvious differences between the nature of the Claimed Goods and the nature of the undoubted reputation the Opponent might fairly claim for the device, I am not satisfied use of the Opposed Mark for the Claimed Goods would be likely to deceive, or cause confusion amongst, a significant or substantial number of relevant consumers. My view in this regard is apparently confirmed insofar as no instances of actual confusion are claimed by the Opponent in its evidence.
The Opponent has accordingly not established its ground of opposition under s 60.
Decision
57.Section 55(1) of the Act provides that 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.
I have found the Opponent has not established either of the grounds it pressed pursuant to ss 44 or 60 of the Act. The Opposed Mark may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time I direct that registration shall not occur until the appeal has been decided or discontinued.
Costs
59.Both parties requested an award of costs in their favour. As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.
Michael Kirov
Hearing Officer
Trade Marks Hearings
20 July 2015
0
22
0