Figurative mark trampled by Red Bull

New Zealand

In Carabao Tawandang Company Limited v Red Bull GmbH (CIV-20065-485-1975, August 31 2006), the High Court in Wellington has upheld Red Bull GmbH's opposition to the registration for energy drinks in Class 32 of the Nice Classification of a figurative mark made up of a horned bovine skull on a predominantly red circular background and the word CARABAO.

Carabao Tawandang Co Limited was established in Thailand in 2001 with the objective of manufacturing and distributing beverages. Carabao launched a range of energy drink products in Thailand in 2002, but is yet to launch the range in New Zealand. Red Bull's energy drinks have been available in New Zealand since 1996. Following Carabao's application to register its mark, Red Bull raised a successful opposition before the assistant commissioner at the New Zealand Intellectual Property Office. Carabao appealed to the High Court.

The court found Red Bull's various trademarks, which include the words RED BULL, a device showing two bulls charging with a circle or disc in the background and some other bull devices, to be extremely well known in New Zealand.

Red Bull claimed that Carabao's mark evoked core aspects of its trademarks, including the concept of a bull. Use of the colour red evoked the concept of 'red bull' especially when combined with the device of a bull's head and the circle behind the skull evoked the circle behind Red Bull's charging bulls logo.

The court held that despite differences that were clear when the marks were compared side by side, including the brand names, the dominant concepts were the same. Commenting on the idea of the marks, the central concept was said to be that of horned cattle, a beast or bull, in association with the colour red. The mark was not limited to the colour red, even though it was applied for in colour. Therefore, it should have been taken as a black and white mark with the applicant having the right to use the mark in all and any colours. The court may have taken the use of the colour red in the application as an indication of the colour in which Carabao was likely to use the trademark.

The court believed that consumers would, either consciously or unconsciously, associate Carabao's mark with the Red Bull products. While the decision itself is fairly pedestrian it adds to current New Zealand jurisprudence about the idea of a mark. In 2005 the High Court ruled that WILD GEESE was confusingly similar to WILD TURKEY when applied to beverages, both trademarks evoking the idea of a wild large bird that is the subject of a hunt. However, in August this year the High Court ruled that PLATINUM HOMES did not evoke the same idea as GOLDEN HOMES, (ie, the idea of a precious metal and a home). The judge in that case also found that to hold GOLDEN HOMES and PLATINUM HOMES similar would give the owner of GOLDEN HOMES a monopoly over any mark evoking precious metals and homes. In the mark GOLDEN HOMES, the word 'homes' is clearly a descriptive word, whereas in the case of RED BULL and WILD TURKEY, both bulls and turkeys have little if anything to do with beverages. Thus, the approach of the High Court to the idea of the mark will depend on the relevance of the idea of the mark to the goods or services.

Kate Duckworth, Baldwins, Wellington

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