Decision confirms that similarity in trade dress may be sufficient in opposition

In Red Bull GmbH v Altanea Gida Anonim Sirketi ([2012] ATMO 120, December 6 2012), the hearing officer has upheld an opposition by Red Bull GmbH against the registration of a mark for energy drinks.

Altanea Gida Anonim Sirketi (the holder) and Red Bull are in dispute in a number of jurisdictions. In Australia, the holder sought registration for the mark below:

Red Bull opposed on the basis of its reputation in respect of the trade dress used on its cans, namely:

The hearing officer confirmed that, under Section 60 of the Trademarks Act 1995, it is not necessary to establish that the marks concerned are deceptively similar. He pointed out that “an opponent may prevail because of the reputation in the mark on which it relies notwithstanding that the trademarks under comparison may even be quite dissimilar”.

To succeed under Section 60, there needs to be a likelihood of confusion which “must depend on the reputation of the opponent’s trademark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trademarks, greater or smaller”.

Red Bull established to the hearing officer’s satisfaction that its trade dress, as used on its cans, “acts as a trademark” and had acquired an impressive reputation in Australia at the priority date of the opposed application.

In considering the similarities between the marks, the hearing officer noted as follows:

• They both use a word element placed against a geometrically patterned background;
• The word element 'Red Bull' is used in red, as is the word 'Replay';
• The colour red is claimed as a feature of the holder’s mark and the red colours used by the holder and Red Bull are very close;
• The words 'Red Bull' and 'Replay' are in a very close, if not identical, font;
• The words 'Red Bull' and 'Replay' are both initially capitalised;
• Both words occupy a central location and are very close in size and proportion relative to the remainder of the mark;
• Both use the capitalised words 'Energy Drink' underneath the product names;
• Both use a background comprising blue coloured trapezoids; and
• When the holder’s trademark is “wrapped” around a can, distinctions blur (see comparison below).  

The hearing officer also referred to the established principle that, if a mark used for goods is adopted for the purposes of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or cause confusion.

The significance of the decision in the present case rests in:

• establishing that trade dress can be relied upon as a trademark for the purposes of a 'reputation' opposition under Section 60 of the act;
• confirming that it is not necessary for an opponent’s mark to be deceptively similar to an applicant’s mark in order to succeed under Section 60; and
• confirming that, along with the representation shown on the application, the way in which a mark is used or likely to be used can be taken into account.  

Sean McManis, Shelston IP, Sydney