Red Bull GmbH

The applicant, Red Bull GmbH, sought to register its trade mark as a defensive trade mark in relation to certain goods and services. The Registrar of Trade Marks opposed the application on the ground that it was not likely that the use of the trade mark in relation to the specified goods and services would be taken to indicate a connection between those goods and services and the applicant. The matter came before Nicholas Barbey.

The central legal issue before the court was whether the applicant had satisfied the requirements of section 187(d) of the relevant Act, which mandates rejection of an application for defensive trade mark registration if it is not likely that the use of the trade mark will indicate a connection between the goods or services and the registered owner. This required the court to consider the extent to which the trade mark had been used and how that use might lead consumers to perceive a connection with the applicant.

The court reasoned that the extent of use of a registered trade mark is critical in establishing the likelihood of a connection for the purposes of defensive registration. While the Act does not explicitly require the trade mark to be famous or mention "reputation," it has been recognised that the mark must possess some reputation in relation to the goods and services for which it is non-defensively registered. This reputation is necessary for the unauthorised use of the mark in relation to other goods or services to suggest a connection with the owner. The court noted that the "connection" contemplated by the Act is not confined to a connection "in the course of trade" but extends to ordinary dictionary meanings, encompassing potential authorisation, sponsorship, endorsement, or strategic alliances. The applicant had argued that the nature of the trade mark, its lack of registration by other traders, its extent of use, the unique nature of its brand, and the presumption of registrability all supported the likelihood of such a connection.