Similarity in trade dress sufficient in opposition

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

Red Bull opposed on the basis of its reputation in respect of the trade dress used on its cans.

The Hearing Officer confirmed that under s60 Trade Marks 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 trade marks under comparison may even be quite dissimilar”.

To succeed under s60, there needs to be a likelihood of confusion which “must depend on the reputation of the opponent’s trade mark, but have regard (amongst other factors) to the level of similarity of the goods/services and the degree of similarity of the trade marks, greater or smaller”.

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

In considering similarities between the marks the Hearing Officer noted:

  • They both use a word element placed against a geometrically patterned background
  • The word 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
  • When the Holder’s trade mark is “wrapped” around a can, distinctions blur.

The Hearings 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 trade mark for the purposes of a reputation opposition under s60 Trade Marks Act 1995
  • 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 s60 Trade Marks Act 1995 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.