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
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
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
They both use a word element placed against a geometrically
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
The words RED BULL and REPLAY are in a very close, if not
The words RED BULL and REPLAY are both initially
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
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
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.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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