Risk of indirect confusion between BULL marks

The Swiss Federal Administrative Court has upheld a decision of the Swiss Federal Institute of Intellectual Property (IGE) in which the latter had sustained an opposition by the owner of the word mark RED BULL against the registration of the word mark DANCING BULL by E & J Gallo Winery (Case B-8055/2008, September 8 2010).
This is the second time that the court has heard this case: in 2008 it reversed and remanded for reconsideration an earlier decision in which the IGE had rejected the opposition on the grounds that the use of the earlier trademark had not been sufficiently demonstrated by the opponent (Case B-246/2008, September 26 2008).
The earlier trademark RED BULL is registered for spirits and liqueurs in Class 33 of the Nice Classification. It is not to be confused with the well-known RED BULL mark for energy drinks (which belongs to a third party, Red Bull GmbH). The decision mentions that there is, allegedly, a co-existence agreement between Red Bull and the opponent under which the latter has the exclusive right to use the trademark RED BULL, as well as other trademarks (eg, BLACK BULL, WHITE BULL and RED BULL SPICY), for Class 33 goods (alcoholic beverages, except beers) in Switzerland. The court held that the existence of the third-party mark did not affect the scope of protection of the opponent's mark, thus rejecting the doctrine of equidistance ('Abstandslehre' in German) - which, according to the court, is advocated only by a few Swiss scholars. Moreover, the court held that the opponent's mark had not been diluted by the use of the third-party mark.
Since the trademark DANCING BULL was registered in Class 33 for alcoholic beverages (excepts beers), the court had no difficulty in finding that the goods at issue were identical. Further, it stated that:

  • the words 'red' and 'bull' belonged to the basic English vocabulary; and
  • the relevant Swiss public (ie, adults) would understand the meaning of these words.
As the opponent's mark was not descriptive with regard to spirits and liqueurs, the court came to the conclusion that it did not have a reduced distinctiveness.
Turning to the global assessment of the marks, the court found that there was a low level of similarity between RED BULL and DANCING BULL. However, the court did not stop its analysis there, and considered whether there was a risk of indirect confusion.
First, the court observed that the word 'bull' was the dominant element of both marks, while the words 'red' and 'dancing' only described the element 'bull'. The court further held that all the marks of the opponent's series of marks followed the same pattern - that is, colour + the word 'bull' (the court considered only the marks for which the opponent had satisfactorily demonstrated use). The trademark DANCING BULL did not follow this pattern, as it did not refer to a colour. Nevertheless, the court held that the idea behind the marks was similar - namely, that of a "cartoon-like", "high-spirited" relationship between the marks and the alcoholic beverages that they identified. The fact that there was no reference to a colour in the DANCING BULL mark was insufficient to preclude a risk of indirect confusion.
Ahmet Kut, Walder Wyss & Partners Ltd, Zurich

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