RED BULL – Seeing Red
A trade mark application was filed in Australia by Red Bull GmbH for the stylised and coloured word mark RED (No. 1156737) for “energy drinks”.
The mark was examined, accepted and advertised in the Australian Official Journal of Trade Marks on 8 May 2008. On 5 August 2008, a Notice of Opposition was filed by U.B. Natural Pty Ltd who filed evidence in support of their opposition within the three month period allowed. The applicant, Red Bull GmbH, after several extensions of time, filed its evidence in answer. Both parties then asked to be heard. The Hearing proceeded on 2 August 2010.
At the opposition Hearing, the Registrar refused to register the trade mark RED (Stylised) in colour and upheld the opposition. This was on the basis that the evidence did not support use of the word Red, as filed, as a trade mark.
At the Hearing, U.B. Natural Pty Ltd based its opposition on one ground only, even though they had cast their Notice of Opposition as broad as possible. This ground was section 41. To be registrable, a trade mark must be “capable of distinguishing” the goods or services of the application from goods of other persons. Section 41 specifies a very proscriptive method to determine if a trade mark is “capable of distinguishing” and thus registrable. The process to follow is best summarised as follows.
Is a mark capable of distinguishing?
In determining if a trade mark is capable of distinguishing the designated goods from goods of other persons, the Registrar must first take into account the extent to which the mark is inherently adapted to distinguish (Section 41(3)). However, if the Registrar is still unable to decide if the mark is capable of distinguishing after taking into account the extent to which the trade mark is inherently adapted to distinguish then section 41(5) or section 41(6) apply:
i) If the mark is to some extent inherently adapted to distinguish
ii) Then Registrar to consider – whether the trade mark “does or will distinguish the designated goods as being those of the applicant”
iii) By combined effect of:
· extent to which is inherently adapted to distinguish;
· the use or intended use of the trade mark; and
· any other circumstances
iv) if not sufficient
· reject
v) If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish
vi) Then – unless the applicant establishes that because of the extent of use prior to the filing date the trade mark does in fact distinguish the goods/services
· reject
i) Section 41(3) – Inherently adapted to distinguish
At the Hearing Red Bull GmbH accepted that the trade mark was not of itself capable of distinguishing under section 41(3). Thus, evidence of use or other circumstances was necessary to support the application.
In terms of the three criteria to be considered under section 41(5) Red Bull GmbH argued that the trade mark clearly had some inherent adaption to distinguish the goods as it was stylised, in atypical font and was limited to a single colour – red – which was not the typical colour for energy drinks.
ii) Section 41(5) – Inherently adapted to distinguish and use of the trade mark
In terms of the stylisation of the mark Red Bull GmbH pointed to the following features, the combined effect of which it argued amounted to a level of distinctiveness:
- the letter ‘R’ with an unusual 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 (corresponds to the colour used by Red Bull GmbH on its goods).
The Registrar accepted that the unit sales for the RED BULL product in Australia “are extremely high”, and that consequently the sale figures and the amount spent on advertising the goods were extremely high.
Reasons of the Registrar
The Registrar did not consider the chosen font to be particularly unusual but she did consider that the combination of the type and the colour was sufficient to remove the trade mark from being the word ‘red’ simpliciter. Thus, the Registrar found that there is at least an amount of adaption to distinguish. However, she considered that the amount of adaption to distinguish is slight.
It is well established law that 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 goods. Most importantly for this case, is the well established principle that “the evidence of use must be for the trade mark that is the subject of the trade mark application”.
The mark under consideration is the first word of a very well known two word trade mark – RED BULL. While Red Bull GmbH provided evidence attesting to very large, impressive and wide-spread use of the RED BULL trade mark on a global scale, the Registrar did not consider the evidence sufficient to demonstrate trade mark use of the (stylised) mark as applied for.
The Registrar therefore came to the decision that the application should be refused.
What is likely to happen in New Zealand?
Red Bull GmbH has applied for the same trade mark here in New Zealand and again, it has been opposed by U.B. Natural Pty Ltd.
The application was accepted under similar provision as section 41 in Australia namely section 18(2) of the Trade Marks Act 2002. Section 18(2) states that the Commissioner must not refuse an application if before the date of the application, as a result of either the use made of it or of other circumstances the trade mark has acquired a distinctive character. This provision is a lot less prescriptive than the Australian provisions but we appear to follow the same procedures. If this is the case, Red Bull GmbH may not secure registration of their mark in New Zealand either. Time will tell.
Lessons from this case
When seeking to establish that a trade mark is capable of distinguishing under section 41 (Australia) or section 18 (New Zealand) the Applicant will have to provide evidence of use of the mark as applied for in order to prove that the mark has acquired distinctiveness.
Russell Law - January 2011
