Real and tangible danger of confusion between ‘red + bird’ marks

Australia

In Red Bull GmbH v Chia Khim Lee Food Industries Pte Ltd ([2012] ATMO 7, January 25 2012), a delegate of the registrar of trademarks has upheld Red Bull GmbH’s opposition to the registration of RED EAGLE on the basis that it was deceptively similar to Red Bull’s earlier registration of the mark RED HAWK.

The issue raised in the opposition was whether the applicant’s RED EAGLE (word and eagle device) mark was “deceptively similar” (as defined in Section 10 of the Trademarks Act 1995) to Red Bull’s RED HAWK (word) mark. The decision is therefore another example of the application of the well-known and often cited comments in Australian Woollen Mills Ltd v FS Walton and Company Ltd (1937) 58 CLR 641:

An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device… The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same...

In deciding that the applicant’s RED EAGLE device was deceptively similar to Red Bull’s RED HAWK mark, the registrar’s delegate relied on the following factors:

  • Both trademarks had an identical prefix ‘red’, followed by the name of a bird of prey and, as was observed in London Lubricants (1920) Ltd’s Appn ((1925) 42 RPC 264), “... the first syllable of a word is, as a rule, by far the most important for the purpose of distinction”.
  • The marks RED HAWK and RED EAGLE were novel because they were not usual or apt descriptions of hawks and eagles (ie, eagles and hawks are not red in colour); nor did they refer to the colour of the relevant products. As a result, the delegate thought that this would focus particular attention on the word ‘red’.
  • However, the mere presence of the word ‘red’ and the reference to a bird in both marks was not considered sufficient by itself for a finding of deceptive similarity, and the delegate was concerned that such a finding would “essentially provide the opponent a monopoly in trademarks consisting of ‘red + bird’”.
  • On a side-by-side comparison of the marks, the delegate also noted that the words ‘hawk’ and ‘eagle’ were quite different in sound and appearance. However, this distinguishing aspect of the marks was not a relevant criterion when applying the proper test for deceptive similarity. As was stated in Jafferjee v Scarlett ([1937] HCA 36), “[t]wo marks, when placed side by side, may exhibit many and various differences, yet the main idea left on the mind by both may be the same…”

Based on these considerations, the delegate decided that, on the balance of probabilities, there was “a real and tangible danger of confusion”, because consumers would be likely to conclude that the marks must be related due to the reference to similar birds (ie, birds of prey) and the unusual combination with the word ‘red’.

Julian Gyngell, Kepdowrie Chambers, Wahroonga

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