U.B.Natural Pty Ltd v Red Bull GmbH

[2010] ATMO 106

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by U.B. Natural Pty Ltd to registration of trade mark application 1156737(32) - RED - filed in the name of Red Bull GmbH.

Delegate:	Alison Windsor
Representation:	Opponent:  Jurgen Bebber of Griffith Hack, Patent and Trade Mark Attorneys Applicant:  Ben Fitzpatrick of counsel, instructed by Davies Collison Cave, Patent and Trade Mark Attorneys
Decision:	2010 ATMO 106 S52 opposition: s41 ground of opposition pursued – evidence does not support use of the word as a trade mark – application refused

Background

1. Red Bull GmbH (‘the applicant’) filed an application to register a trade mark, current details of which are shown below:

   Application number:           1156737
   Filed on:  17 January 2007
   Goods specification:             Class 32:  Energy drinks

   Trade Mark:  

   Endorsements:  Provisions of subsection 41(5) applied.

   The trade mark registration is limited to the colour RED as shown in the representation of the trade mark attached to the application form.

2. The application was examined as required by section 31 of the Trade Marks Act 1995 (‘the Act’).  It was advertised in the Australian Official Journal of Trade Marks on 8 May 2008 as accepted for possible registration

3. On 5 August 2008 U.B. Natural Pty Ltd (‘the opponent’) filed notice of opposition to the registration.  The opponent filed and served its evidence in support within the three month period allowed for the purpose by the Trade Mark Regulations 1995 (“the Regulations”).  After being granted several extensions of time, the applicant filed its evidence in answer.  Both parties then asked to be heard and I was delegated by the Registrar of Trade Marks to hear the matter in Melbourne on 2 August 2010.  

4. However, on 15 July 2010, I received a request from the opponent that the Registrar issue a notice requiring the applicant to produce certain documents (“Notice to Produce”).  The documents in question were said to relate to:

   the Applicant’s motivation to adopt and subsequently use the opposed mark, RED (stylised).  These documents are directly relevant to “intention to use” (section 59) ground of opposition pleaded.

   …

   The Applicant has filed a significant amount of evidence, all of which relates to the use of and reputation in the trade mark RED BULL.  The Applicant’s evidence does not detail any use of or intention to use the RED (stylised) trade mark, the absence of which, together with the Applicant’s conduct in filing and re-filing RED trade marks, suggests that the opposed trade mark was filed for tactical reasons rather than with a genuine intention to use that trade mark in Australia. 

5. The applicant objected strongly to the request stating

   It is unreasonable and prejudicial to the applicant to make a request for production of documents two weeks out from a Hearing date.  Moreover, there is no explanation as to why such a request was not filed earlier.  In this regard, as the Opponent elected not to file evidence in reply, the evidentiary stages of the opposition were effectively concluded over six months ago on 2 December 2009.  If the Opponent wished to seek an order for production of documents then, absent a satisfactory explanation, this order should have been sought at the concluding of the evidentiary stages.

6. On 21 July 2010 I contacted both parties and issued the following directions:

   • The hearing would go ahead on the date set.
   • Both parties would give submissions on the matter of the Notice to Produce.
   • After hearing these submissions, I would hear the substantive matters except for that relevant to section 59 (to which the Notice to Produce was to relate).
   • The section 59 matter would be adjourned until such time as I had decided the opposition in respect of other grounds.  If the opponent was successful in respect of one ground, the matter of the Notice to Produce would no longer be relevant.
   • If the opponent did not succeed on any other ground, at that point I would reconsider the Notice to Produce and the parties would have the option to be heard on the section 59 matter.

7. The hearing went ahead on the designated day and proceeded as directed.  At the hearing, Jurgen Bebber of Griffith Hack Patent and Trade Mark Attorneys appeared for the opponent.  Ben Fitzpatrick of counsel appeared for the applicant, instructed by Davies Collison Cave Patent and Trade Mark Attorneys, who were represented by Michael Wolnizer.

   Grounds pursued and onus

8. Despite having cast the notice of opposition in the broadest possible terms, the opponent pursued a single ground at the hearing, that being section 41. The section 59 ground remained pending, for reasons which will become obvious later in the decision.

9. For completeness, I decide that all of the grounds nominated on the notice of opposition and which were not specifically pursued at the hearing (except for section 59) have not been established.

10. The onus is on the opponent to establish a ground of opposition in order to succeed.  The standard of proof is that of the balance of probabilities.[1]

    [1] [1] Pfizer Products Inc v Karam (2006) 70 IPR 599, per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

    Evidence provided

11. The opponent provided a single declaration as evidence in support of its opposition:

    • Theo Kotiadis, director of U.B. Natural, made 2 November 2008, with Annexures A to F

12. The applicant provided the following declarations as evidence in answer:

    • Dr Volker Viechtbauer, general counsel of Red Bull GmbH, made 10 November 2009, with Exhibits VV-1 to VV-18
    • Michael Charles Wolnizer, Partner of Davies Collison Cave, made 2 December 2009, with exhibits MCW-1 to MCW-5
    • Cheryl Hrvoj, solicitor, made 2 November 2009, with exhibits CH-1

13. What follows is a very short summary of some of the main points of the evidence.  I will make references to relevant portions during my discussion of the issues later in this decision.

    Evidence in support

14. The Kotiadis declaration provides information on the opponent’s company structure and its relationship with two other companies:  TC Capital Pty Ltd (“TC Capital”) and Red Eye International Pty Ltd (“Red Eye International”).  The opponent and TC Capital mainly hold intellectual property which Red Eye International is authorized to use.  Red Eye International’s main trading activities relate to the manufacture and sale of beverages, both in Australia and abroad, with its main focus on the energy drink sector of the market.

15. In Australia, Mr Kotiadis says, the opponent and TC Capital own trade mark registrations for the following trade marks which contain the word ‘Red’:

Registration Number	Class 32 goods	Trade Mark
675192	Mineral and aerated waters; soda water, dry ginger ale, tonic water, lemon squash; bitter lemon, lemonade, orangeade; energy drinks in this class being sports drinks, including electrolyte replacement beverages for sports but not for medicinal purposes; dietetic and low calorie forms of all the foregoing goods but not for medicinal purposes; concentrates, syrups, powders and other preparations and substances in this class for making all the foregoing goods; none of the foregoing being beers or fruit juices
728332	Non-alcoholic drinks and beverages, mineral and aerated waters; soda water, dry ginger ale, tonic water, lemon squash, bitter lemon, lemonade, orangeade, fruit juices, fruit drinks and beverages containing fruit juice and fruit juice flavouring, including mineral and aerated water containing fruit juice or fruit juice flavouring, sports drinks and energy drinks including electrolyte replacement beverages for sports but not for medicinal purposes, dietetic and low calorie forms of all the foregoing goods but not for medicinal purposes; concentrates, syrups, powders, tablets, dissolvable tablets and other preparations and substances in this class for making all the foregoing goods; none of the foregoing being beers	RED EYE
843335	Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages	Red Lizard

1. Mr Kotiadis also provided the following information about the opponent’s use of trade marks which include the word ‘Red’: 

   ·     A predecessor in business of Red Eye International began selling energy drinks with reference to the trade mark subject of registration 675192 in late 1995, and Red Eye International continued using the trade mark after purchasing the business in 1999. 

   ·     In November 2003 Red Eye International commenced selling energy drinks with reference to the following trade mark[2] and has continuously sold goods bearing this trade mark up until the present:

   • From about January 2006 Red Eye International began selling energy drinks in Australia using the RED LIZARD trade mark.
   • The goods bearing the opponent’s trade marks are sold in large retail outlets such as Safeway and Coles, as well as through independent grocery stores, petrol and convenience stores and outlets such as milk bars, cafes, restaurants and bars.

   [2] This trade mark is not registered, though the eye device portion is the subject of registration 970036 owned by the opponent.

2. The Kotiadis declaration provides sales and advertising figures for the registered and unregistered RED EYE trade marks which appear to me to show significant and consistent commercial activity.  These sales figures all demonstrate continuous sales from dates earlier than the priority date of the opposed application.

3. Annexure F to the Kotiadis declaration provides a list of entries on the Australian Trade Marks Register all of which include the word ‘red’ and all of which claim goods in class 32.  Most of the specifications in that class also incorporate goods which fit the description ‘energy drinks’.  Mr Kotiadis states that he is not aware of an energy drink which uses the word ‘red’ on its own as a trade mark.  He gives his opinion that the word ‘red’ is commonly used and commonly desired to be used in Australia for non-alcoholic beverages.  He states that providing the applicant with a monopoly in the word ‘red’ will not only have undesired consequences for the opponent’s trading activities in Australia, but would also have the same effect for other traders in the particular beverages market.

   Evidence in answer

4. Much of the information provided in the Viechtbauer declaration refers to the applicant’s RED BULL trade marks in use in countries other than Australia and particularly in Europe.  However, it states that the RED BULL energy drink was first sold in Australia in a 250ml can in 1997.  The drink was released for sale in bottled form in 2002 and in 2003 a sugar free version appeared on the shelves.  Images of each of these containers bearing the RED BULL trade mark are shown below:

5. The declaration provides unit sales for Australia for the years 2003 to 2008.  These figures are extremely high, especially given Australia’s relatively small population.  Sales figures consequently are also extremely high, and the amount spent on advertising in Australia alone is likewise extremely high.  Worldwide, billions of units are sold every year and the trade mark is very heavily promoted resulting in annual turnovers in the billions of Australian dollars. 

6. Mr Veichtbauer also provides a range of information which goes to the global reputation and renown of the RED BULL trade mark.  This information is summarized below:

   ·     The European Brand Institute in its publication ‘Eurobrand 2009’ states that Red Bull is the most valuable Austrian brand, and the only Austrian brand within the European range of top brands.

   ·     Brand Z (an authoritative ranking report from MillwardBrown about the most valuable brands in the world) ranks Red Bull as number 79 in its May 2009 report.

   ·     Red Bull participates in Formula One racing via its Red Bull Racing team.  The size of the worldwide TV audiences for these events leads to important television coverage for the brand and trade marks on a global basis.

   ·     Red Bull also owns the Red Bull Racing Team which competes in the National Association for Stock Car Auto Racing (NASCAR) – the most popular car racing circuit in the United States.  This is another event which has a TV presence in many countries.

   ·     Red Bull is also involved in the Dakar Rally (formerly known as the Paris Dakar Rally); in soccer, ice hockey, X-fighters (a freestyle motocross contest); the Red Bull Air Race, Flugtag (a home made flying machine contest).

   ·     The Red Bull Art of Can Contest, which consists of people creating works of art inspired by and utilizing the Red Bull Can.  The event began in 1995 and 26 events have been held in 16 countries world wide.

   ·     The Red Bull Music Academy which began in 1998.  This event now incorporates 28 countries and offers a platform where participants can exchange musical knowledge and ideas in a forum which promotes creativity and development for the musicians.

   ·     Red Bull also sponsors and organizes events all over the world.  In Australia it sponsors many young athletes and plays a big part in sponsoring organizing many events which are described as “extraordinary” events.  The declaration provided a list of 23 sponsored Australian athletes and approximately 70 events organized between 2003 and 2009.

7. There is further information about ‘trial and awareness studies’, market share and consumer and market surveys both in Australia and in Europe.  I will refer to some of this material later in this decision.

8. Mr Veichtbauer refers to the Red Bull trade marks as “notorious or well-known”, and states that the renown of the RED Bull brand and trade marks has been confirmed by various Courts and Trade Mark Offices in Europe and the world.  Brief details of a number of decisions have been tabulated in the declaration.

9. The Wolnizer declaration serves as a vehicle to introduce into proceedings the declarations which formed the evidence of use provided to the examiner during the course of examination, and which ultimately led to the trade mark application being accepted for possible registration.  The declarations are the following:

   • Exhibit MCW-1 - Jennifer Powers, trade mark counsel of Red Bull GmbH, made on 13 March 2006 with Exhibits A to E
   • Exhibit MCW-2 - Nicholas Keynes, project director of Newspoll Market Research, made 9 June 2006 with exhibit NK5

10. In addition, Exhibit MCW-4 includes two declarations, without any of their exhibits, which formed part of the evidence in support of the applicant’s opposition to trade mark application 936834.[3]  The decision itself forms the remainder of the exhibit.  The declarations are those of Nicholas Bryden, corporate counsel and human resources manager of both Red Bull Australia Pty Limited and Red Bull New Zealand Limited, made 13 February 2004 and Jennifer Powers, who has been mentioned previously, made 21 October 2003.

    [3] Red Bull GmbH v Carabao Tawandang Co Ltd [2006] ATMO 60

11. All of these declarations, as well as that of Ms Hrvoj go to demonstrating that RED BULL is a very well-known trade mark on a world-wide basis, with a strong and increasing reputation in Australia.  There is a strong contention running through the evidence suggesting that this renown is of such stature that the relevant buying public is likely to connect the word RED with the applicant’s RED BULL product when it is used on an energy drink. 

    The Law

12. The relevant law in this matter resides largely in the provisions of the sections of the Act which I have set out following. They are sections 17, 33 and 41.

13. Section 17 provides:

    Section 17.  What is a trade mark?

    A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. 

    Note:  For sign see section 6.

14. Section 33 provides:

    Section 33. Application accepted or rejected

    (1)  The Registrar must, after the examination, accept the application unless he or she is satisfied that: 

    (a) the application has not been made in accordance with this Act; or

    (b) there are grounds under this Act for rejecting it.

    Note:  For this Act see section 6.

    (2)  The Registrar may accept the application subject to conditions or limitations. 

    Note:  For limitations see section 6.

    (3)  If the Registrar is satisfied that: 

    (a) the application has not been made in accordance with this Act; or

    (b) there are grounds under this Act for rejecting it;

    the Registrar must reject the application.

    Note:  For this Act see section 6.

    (4)  The Registrar may not reject an application without giving the applicant an opportunity of being heard. 

    Note:  For applicant see section 6.

15. Section 41 provides the following:

    Section 41. Trade mark not distinguishing applicant's goods or services

    (1)  For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant. 

    Note 1: For applicant and predecessor in title see section 6.

    Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

    (2)  An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons. 

    Note:  For goods of a person and services of a person see section 6.

    (3)  In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

    (4)  Then, if the Registrar is still unable to decide the question, the following provisions apply.

    (5)  If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services: 

    (a) the Registrar is to consider whether, because of the combined effect of the following:  

    (i) the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

    (ii) the use, or intended use, of the trade mark by the applicant;

    (iii) any other circumstances;

    the trade mark does or will distinguish the designated goods or services as being those of the applicant; and 

    (b) if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

    (c) if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

    Note 1: For goods of a person and services of a person see section 6.

    Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

    (6)  If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply: 

    (a) if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant-the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

    (b) in any other case-the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

    Note 1: Trade marks that are not to any extent inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate: 

    (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or 

    (b) the time of production of goods or of the rendering of services.

    Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

    Submissions

1. The opponent pursued a single ground of opposition at the hearing, that being the ground relevant to section 41 of the Act. Deciding this ground will determine whether the matter of the opponent’s application to the Registrar for issue of a Notice to Produce and, following from that, the matter of hearing the section 59 ground of opposition should proceed. As noted previously, if I find that the opponent is successful under section 41, the section 59 ground becomes moot, and the application for issuance of a Notice to Produce will not be considered further.

2. The trade mark under consideration in this opposition is the word RED, which was accepted for possible registration under the provisions of subsection 41(5) in the following specific format and endorsed with a restriction to the colour ‘red’:

3. Both applicant and opponent relied on the Michigan[4] case to support their respective positions. The opponent submitted that:

   [T]he Delegate should consider whether ‘other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods”.  Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 515 per Kitto J. The question is an objective one posed at the lodgement date of the application (17 January 2007) and without regard to actual use of the trade mark or the application for registration of the trade mark itself. The Delegate may also be assisted by Note 1 to section 41(6), set out above.

   The opponent contends that other traders have a genuine desire to use the word ‘red’ in relation to similar goods without being actuated by improper motives.  Mr Kotiadis has declared that his companies have used and registered trade marks containing the word red, namely RED ENERGY DRINK WITH ATTITUDE & EYE DEVICE, RED EYE and RED LIZARD.  The Kotiadis declaration also details trade mark applications by third parties for trade marks including the word ‘red’ filed and/or registered in relation to non-alcoholic beverages in class 32 (Kotiadis Declaration [13] and Annexure F).  It is submitted that the state of the register shows, irrespective of whether each of the marks in annexure F of the Kotiadis Declaration are in fact used, that other traders desire to use trade marks containing the word ‘red’ in relation to the same or similar goods.

   Accordingly, the opponent contends that the opposed mark is not inherently adapted to distinguish the applicant’s goods. 

   [4] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511.

4. The applicant referred to its trade mark as the STYLISED RED LOGO and made the following submissions:

   In Clark Equipment Co v Registrar of Trade Marks (1964)111 CLR 511, Kitto J. at p. 514 encapsulated the relevant test under the old Act as follows:

   [The] ultimate question must not be misunderstood  It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others … [T]he question whether a mark is adapted to distinguish [is to] be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

   In considering whether the mark STYLISED RED LOGO is inherently adapted within the meaning of section 41 of the Act the traditional test may be reformulated so as to pose as a central question whether other traders are likely, in the ordinary course of their business and without improper motive to desire to use the STYLISED RED LOGO as a mark in respect of the claimed goods.

   ….

   The applicant accepts that the mark is not of itself capable of distinguishing within the meaning of section 41(3) of the Act. Accordingly, evidence of use or other circumstances is necessary to support the application under opposition.

5. The applicant described the trade mark applied for as being a stylized form, in an atypical font and limited to a single colour – red – which it said was not the typical colour for energy drinks.  Therefore, it said, the trade mark clearly has some inherent adaptation to distinguish the claimed goods. 

6. In describing the stylization of the trade mark, the applicant highlighted the following features the combined effect of which, it submitted, amounted to a level of distinctiveness such that it was appropriate for the examiner to apply the provisions of subsection 41(5):

   ·     The distinctive letter ‘R’ with an [un]usual solid vertical line which is not intersected by the loop on the stem of the letter

   ·     The use of sharp extremities in all the letters

   ·     The bulbous impression given by the positioning of the circle and the thickness of the letter ‘d’ and

   ·     The limitation to a striking red colour (which corresponds to the colour used by the applicant on its product.

7. The applicant also submitted that the applicant had engaged in massive use and promotion of its get-up in Australia, the get-up including use of the word RED in the format for which it was accepted.  This, it said, pointed to a low likelihood that another trader would wish to use the term ‘red’ in the manner applied for by the applicant without some improper motive, such as a desire to copy the applicant’s trade mark.

8. The opponent submitted that the stylization of the applicant’s trade mark was not particularly unusual and provided the following comparative example to assist in making its point:[5]

   Red

   (opposed trade mark)  (in Arial font)

   [5] The second representation is in standard Arial font, bolded and coloured red.

9. Because of what it perceived as the similarity between the applicant’s claimed trade mark and a very common and easily accessible printing font, the opponent submitted that the trade mark had no inherent adaptation to distinguish the applicant’s goods as it consisted wholly of a sign that is ordinarily used to indicate a characteristic of energy drinks, namely that the beverages or their packaging are red in colour.

   Discussion and reasons

10. Section 33 of the Act does not allow the Registrar any discretion in the matter of accepting or rejecting an application. If I, as the Registrar’s delegate, am satisfied that there are no grounds for rejecting the application, then I must allow the application to proceed to registration. Conversely, if I am satisfied that there are grounds for rejecting the application, then I must reject it. Similarly, subsection 41(2) does not allow the Registrar any discretion in accepting a trade mark if it is not capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

11. The interrelationship of sections 41 and 33 was discussed in detail by Justice Branson in the Oregon decision.[6]  Her words are often quoted and were recently referred to by Kenny J in Sports Warehouse Inc v Fry Consulting Pty Ltd [2010 FCA 664] at paragraph 14:

    [6] Blount Inc v Registrar of Trade Marks [1998]40 IPR 498

    In summary, s 41(2) requires the Registrar to reject an application where the trade mark is “not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered from the goods or services of other persons”. Whether or not the trade mark is “capable of distinguishing” the designated goods or services from the goods and services of other persons is to be determined by reference to subsections (3) to (6) of s 41. As Branson J said in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 83 FCR 50 (‘Blount’) at 56, these provisions are “designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant’s goods or services”. Further, to quote Sundberg J in Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 (‘Chocolaterie Guylian’) at 65 [9], this process involves the following steps:

    (a) The Registrar must first “take into account the extent to which the trade mark is inherently adapted to distinguish” the relevant goods [or services] from the goods [or services] of others: s 41(3);

    (b) If that consideration leads to a conclusion that the trade mark is capable of distinguishing the goods [or services] from those of others, then, so long as the Registrar is not satisfied that any other grounds for rejecting the [application for registration] exist, she must accept the [application for registration] . . . ;

    (c) However, if the Registrar is “unable to decide” whether the trade mark is capable of distinguishing the goods [or services] by the “inherently adapted” consideration alone, then either s 41(5) or s 41(6) applies: see s 41(4). Section 41(5) will apply if the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the ... goods [or services] from the goods [or services] of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the ... goods [or services]”. By contrast, s 41(6) will apply if the Registrar finds that the trade mark “is not to any extent inherently adapted to distinguish”.

    (d) If the Registrar finds the trade mark is to some extent inherently adapted (s 41(5)), the Registrar is then required to consider whether the trade mark “does or will distinguish the ... goods [or services] as being those of the applicant”, by taking into account the combined effect of the following three matters (s 41(5)(a)):

    ·the extent to which the trade mark is inherently adapted to distinguish;

    ·the use, or intended use, of the trade mark by the applicant; and

    ·any other circumstances.

    (e) After taking those matters into account, the trade mark is “taken to be capable of distinguishing the applicant’s goods [or services] from the goods [or services] of other persons” only if the Registrar is “satisfied” that the trade mark in fact does or will so distinguish the goods: s 41(5)(b). If the Registrar is not so satisfied, then the trade mark is taken not to be capable of distinguishing (see 41(5)(c)), a ground for rejecting the [application for registration] will thereby exist and the Registrar is then required to reject the [application for registration]....

    (f) In the alternative scenario that the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish (s 41(6)), then the trade mark is taken not to be capable of distinguishing the goods [or services] unless the applicant “establishes” that, because of the extent to which the applicant has used the trade mark prior to the relevant filing date of the application, the trade mark does in fact distinguish the goods [or services] as being those of the applicant: s 41(6)(a) and (b).

    (Emphasis original.)

12. The application was accepted at examination under the provisions of subsection 41(5).  I am satisfied that the trade mark is not totally devoid of adaptation to distinguish, and therefore the provisions of that subsection are appropriate.  While I do not find that the chosen font is particularly unusual, I consider that the combination of the type and the colour to which it is restricted is sufficient to remove the trade mark from being the word ‘red’ simpliciter.  There is at least an amount of adaptation to distinguish within the trade mark as applied for.

13. However, I am also satisfied that the amount of adaptation to distinguish is slight, and quoting Justice Kenny again (paragraph 110):

    Since the trade mark … has a relatively low level of inherent adaptation to distinguish compared to many other marks, it will require a correspondingly higher level of use and other circumstances to satisfy the Court that it does or will distinguish the designated services see Chocolaterie Guylian at 88 [83]; Unilever Australia Ltd v Societe Des Produits Nestlé SA [2006] FCA 782; (2006) 154 FCR 165 at 177 [57] (Bennett J); Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502; (2003) 134 FCR 51 at 59-60 [42] (Wilcox J); also Shanahan’s Australian Law of Trade Marks and Passing Off (Mark Davison, Tracey Berger and Annette Freeman; 4th edition; Lawbook Co; Sydney; 2008) (‘Shanahan’s’) at [25.650]. The less the mark is inherently adapted to distinguish, the more the actual use of the mark (or other circumstances) will be required to satisfy the Court that the trade mark does or will distinguish the designated services. … The evidence of use must be for the trade mark that is the subject of the trade mark application: Shanahan’s at [25.655] and Woolworths Ltd v BP Plc at 126-7 [121]-[123] (in relation to s 41(6)).

    (Emphasis added)

14. The trade mark under consideration here is the first word of a very well known two word trade mark – .  The applicant has provided evidence attesting to very large, impressive and wide spread use of this trade mark on a global scale.  The trade mark applicant has provided examples of use of this trade mark which are, in the main, examples showing the use of the trade mark with and without its accompanying ‘fighting bull’ device and blue and silver livery.[7]  All and any of this use is obviously not use of the exact trade mark subject of the application.  However, the applicant also provided evidence and submissions designed persuade me that this shortfall in evidence can be overcome.

    [7] See images at paragraph 19.

15. The Veichtbauer and Wolnizer declarations both rely on the results of consumer surveys.  As far as I can see, all of these surveys are designed to demonstrate that the purchasing public connects the single word RED with the applicant’s energy drinks.  The applicant appears to claim that this recognition by the public is such that it serves to provide it with de facto use of the single word as a trade mark.

16. The applicant submitted that the public was likely to be exposed to the single word RED on the relevant goods at points of sale.  The reasoning here is that a cylindrical can, when stacked on a shelf in a supermarket or other store, will seldom show the full trade mark because of the curvature of the can surface.  Therefore, when cans are closely stacked on the shelf, what is most likely to appear to the purchaser is a block of cans all showing the word RED.  This will help create a strong association in the minds of the relevant market between the applicant and the trade mark subject of the application.

17. As an aside, these submissions given about the blocks of cans on the retailer’s shelves makes an unwarranted assumption that the word RED will always be foremost and most visible on the can.  With a slight twist of the can, what the purchaser could be faced with is a block of cans all showing the word .  This hypothetical situation tends to somewhat devalue the applicant’s reasoning in the previous paragraph.

18. Put bluntly, I am not satisfied that any of the evidence the applicant has provided demonstrates trade mark use of the stylized word applied for.  In Chocolaterie Guylian[8] Justice Sundberg discussed the problems faced by Guylian in demonstrating trade mark use of the shape of a chocolate in circumstances very similar to those of the present case. He made reference to the decision in Woolworths Ltd v BP Plc(No 2) (2006) 154 FCR 97 and made comments which I consider are particularly apt in this case:

    There were particular problems with the survey evidence in BP (No 2), including the fact that BP’s application had been for the use of green as the predominant colour to be applied to signage boards and petrol pumps (thereby leaving within the available scope of the trade mark other unspecified colours), but the survey respondents had been shown a service station with features that were wholly green.  However, their Honours’ observation that association must be “referable to the use of the mark as a trade mark” is apt to describe the problem confronting Guylian in this case.  The survey evidence here plainly shows an association between the seahorse shape and Guylian.  This is no doubt due in large part to the substantial sales of Guylian’s sea shell chocolates with the seahorse shape over a considerable period of time.  However, even assuming that the association in this case is strong enough, the anterior question is whether the association is referable to Guylian having used the shape as a trade mark.  In other words, is the fact that a relatively large proportion of consumers may think of Guylian when they see the shape a consequence of Guylian having educated the public to recognise it as a badge of origin.  When the evidence of use is considered as a whole, I am not satisfied that Guylian has done so …

    [8] Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891, at paragraph 95

19. I am prepared to accept that the results of the various surveys demonstrate some kind of association in the minds of those people surveyed between the applicant and the word RED.  However, I am not satisfied that the association amounts to use of the word RED as a trade mark.  The trade marks for which the evidence has demonstrated use consist of the words RED BULL, with or without the charging bull device and with or without the particoloured background in shades of blue and silver.  I can find nothing that equates to use of the word RED in the stylized logo form (or in any other form) as a trade mark to identify the applicant’s goods.

20. Returning again to Chocolaterie Guylian, at paragraph 100, Justice Sundberg commented as follows on the matter of survey evidence:

    The cases confirm that association evidence on its own does not prove distinctiveness; the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods:  see BP(No 2) 154 FCR 97 and Unilever [2003] RPC 35. The Full Court’s observations to this effect in BP (No 2) are just as relevant to a consideration of use under s 41(5) as they are to s 41(6). In essence, the survey in this case tested respondents’ ability to recognise a shape and associate it with a manufacturer or brand. It tested “brand recognition”, … “the ability of a consumer to confirm prior exposure to a brand when presented with one of the brand’s identity elements”. When regard is had to the way the shape has been used, the survey results do not in my view confirm that consumers actually understand the shape as an indicator of the origin of the goods. The results plainly show a large degree of public recognition of the shape, but as Jacob J said in Unilever [2003] RPC 35 at 662: “[W]hat has not been proved is that any member of the public would rely upon the appearance alone to identify the goods. They recognise it but do not treat it as a trade mark”.

21. The provisions of subsection 41(5) allow for a trade mark to be registered if it is not inherently sufficiently adapted to distinguish, but which has been shown, by evidence of use prior to the filing date to have the capacity to distinguish the relevant goods. This use must show that the sign applied for as a trade mark has been used as a trade mark, that it is capable of doing the job of distinguishing the applicant’s goods, and that is will serve as a badge of origin for those goods. The information put before me does not meet these requirements. The applicant has not established that the sign it has applied for is capable of distinguishing its goods. The ground of opposition under the provisions of section 41 has thus been established.

    Decision

1. Section 55 of the Act provides the following:

   Section 55. Decision

   (1)  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. 

2. I refuse to register trade mark application 1156737.

   Costs

3. It is usual for costs to follow the event.  The opponent has succeeded in its opposition.  I award costs against the applicant according to the official scale as set out in Schedule 8 to the Trade Mark Regulations 1995.

   Alison Windsor
   Hearing Officer
   Trade Marks and Designs Hearings
   29 October 2010