TRADE MARKS ORDINANCE (Cap
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TRADE MARKS ORDINANCE (Cap. 559) OPPOSITION TO TRADE MARK APPLICATION NO.: 302083374AB MARK: CLASS: 5 APPLICANT: JU-SIK-HOI-SA BUL-S-ON (BULLSONE CO., LTD.) OPPONENT: RED BULL AG _____________________________________________________________________ STATEMENT OF REASONS FOR DECISION Background 1. On 11 November 2011, Ju-Sik-Hoi-Sa Bul-S-On (Bullsone Co., Ltd.) (“Applicant”) filed an application (“subject application”) under the Trade Marks Ordinance (Cap. 559) (“Ordinance”) for the registration of the series of marks “ ” with priority claim of 20 May 2011 for mark A. Although mark A is represented in colour, it has no colour claim and both marks A and B would be considered as the same mark (“subject mark”). 1 2. For a claim to priority, it is required under section 41(1) of the Ordinance that the trade mark as shown in the representation included in the subject application must be the same as the trade mark as shown in the representation included in the Convention application or WTO application based on which the priority is claimed. If colour(s) are element(s) or feature(s) of the Convention application or WTO application, the applicant should claim the colour(s) as element(s) of the trade mark in the Hong Kong application as well. In the present case, priority claim is only made in respect of mark A which is represented in colour but not for mark B which is in black and white. Since there is no evidence before me as to whether colour claim was made in the Convention application or WTO application based on which the priority is claimed, it remains doubtful if the priority claim in the subject application is validly made or not. 3. Registration is sought in respect of the following goods in class 5 (“subject goods”): Class 5 Deodorants, other than for personal use; insect repellents; incense (insect repellent-); air purifying preparations; air freshening preparations; insecticides; disinfectants for hygiene purposes; sticks (fumigating-); fumigating pastilles. 4. Particulars of the subject application were published on 8 March 2013. Red Bull AG (“Opponent”) filed on 7 June 2013 a notice of opposition to the subject application together with a statement of grounds of opposition (“Notice of Opposition”). A counter-statement (“Counter-statement”) was filed by the Applicant on 5 November 2013 in response to the Notice of Opposition filed. 5. As evidence in support of the opposition, on 5 November 2014 the Opponent filed under rule 18 of the Trade Marks Rules (Cap.559, sub. leg.)(“Rules”) a statutory declaration made by Jennifer A. Powers, the Intellectual Property Counsel of Red Bull GmbH and authorized representative of the Opponent, together with exhibits (“Powers’ 1st SD”), and a statutory declaration made by Zhang Kan, an Intellectual Property Paralegal of the Opponent’s solicitors, together with an exhibit (“Zhang’s SD”). The Applicant filed on 14 March 2017 under rule 19 of the Rules a statutory declaration made by Chang-Hoon 2 Lee, the C.E.O. of the Applicant, together with exhibits (“Lee’s SD”) in support of its application. The Opponent filed under rule 20 of the Rules a statutory declaration each on 23 February 2018 and 13 March 2018 made by Jennifer Austin Powers, together with exhibits (“Powers’ 2nd SD” and “Powers’ 3rd SD” respectively) as evidence in reply. 6. The opposition hearing was heard on 27 March 2019. The Opponent was represented by Mr. Jeffrey Chau, Counsel, instructed by So Keung Yip & Sin. The Applicant did not attend the hearing but filed written submissions on 21 March 2019 and 26 March 2019. Notice of Opposition 7. It is pleaded in the Notice of Opposition that the Opponent is a member of the Red Bull Group and filed the opposition on behalf of itself, its predecessors-in-title, Red Bull GmbH and other members in the Red Bull Group (collectively “Red Bull Group”). 8. The Red Bull Group owns “ ”, “ ” and other similar trade marks which incorporate the bull device “ ” as an element (collectively “Red Bull Marks”), and all rights, including copyright, subsisting in the Red Bull Marks. 9. The Red Bull Marks have been registered by the Red Bull Group in over 205 jurisdictions globally, in respect of a wide range of goods and services including those falling in class 5, and related goods and services. In Hong Kong, the Red Bull Group owns about 100 trade mark applications and registrations for a wide range of goods and services. The Opponent has set out 8 Hong Kong 3 registrations for the Red Bull Marks in the Notice of Opposition (see Annex). 10. The first use of the Red Bull Marks was in Austria in 1987. The Red Bull Marks have since then been continuously used by the Red Bull Group and their licensees worldwide (including in Hong Kong since 1999) in respect of a wide range of goods and services, including those falling in class 5, and related goods and services as well as advertising and promotional materials, and on their websites. The subject goods are identical or substantially similar to, or related to or associated with, the goods and services in respect of which the Red Bull Marks are used and registered. 11. By virtue of such extensive and long-standing use and registrations, the Red Bull Marks have become distinctive of and have come to be identified exclusively with the Red Bull Group and their goods and services. The Red Bull Marks are “earlier marks” within the meaning of section 5 of the Ordinance by reason of the prior registrations as well as the use and fame of the marks. Since the Red Bull Group has already registered and acquired substantial reputation in the Red Bull Marks, the use or registration of the subject mark, which incorporates a device substantially similar to the Red Bull Marks, will cause confusion or mislead the public that it is one of the Red Bull Marks and the goods or services under the subject mark also emanate from the Red Bull Group. 12. The Red Bull Group seeks to rely on sections 11(1), 11(4), 11(5), 12(3), 12(4) and 12(5) of the Ordinance in support of the opposition. Counter-Statement 13. In the Counter-statement, the Applicant denies or does not admit all the grounds pleaded in the Notice of Opposition. In particular, the Applicant avers that, having taken the priority claim of the subject mark into account, the Trade Mark nos. 302012200, 302200599AA and 302200599AB set out in the Notice of Opposition are not “earlier trade marks” for the purpose of section 5 of the Ordinance, and the Opponent should not be allowed to rely on Trade Mark nos. 301822194AB and 302030651, which belong to T. C. Pharmaceutical Industries 4 Co., Ltd. (“TCP”). Further, the application in relation to classes 1, 2 and 3 of the Opponent’s Trade Mark no. 301822194, being divided into 301822194AA and 301822194AB, should have been abandoned. 14. For comparison of marks, the Applicant avers that it is misleading to single out the two “bull” devices from the whole of the subject mark and the Red Bull Marks and to artificially turn the position of the bull device of the subject mark towards the ground. The Applicant expressly denies that the subject mark and the Red Bull Marks are similar as the subject mark’s idea of a “galloping bull” is completely different from the Red Bull Marks which contain the prominent words “RED BULL” and convey the idea of two bulls fighting. 15. The subject mark is said to have been independently devised by the Applicant and has been extensively and substantively used and registered in South Korea, Hong Kong and many other territories. The Applicant alleges it has acquired goodwill and reputation in respect of the subject goods bearing the subject mark of which the public has associated with the Applicant. The Applicant denies that the Red Bull Marks are entitled to protection as well-known trade marks under the Paris Convention. 16. The Applicant avers that different bull devices have been co-existing on the Hong Kong trade mark register and the market place, the subject mark and the Red Bull Marks, with remarkably distinguishable features, should therefore equally be allowed to co-exist, without the risk of causing any confusion. Where necessary, the Applicant will rely on “honest concurrent use” and/or “special circumstances” under section 13 of the Ordinance. 17. The Applicant requests that the opposition be dismissed with costs to the Applicant. Relevant date 18. As it remains doubtful if the priority claim in the subject application is validly made or not, I consider that the relevant date for considering the opposition is 11 November 2011, that is the filing date of the subject application. 5 The Opponent’s evidence of use 19. According to Powers’ 1st SD, the Opponent is a wholly owned subsidiary of Red Bull GmbH, an international manufacturer and marketer of, inter alia, energy drinks sold under the famous trade marks “RED BULL”, “ ” (“Double Bull Device”) and “ ” (“Single Bull Device”). 20. The history and global launch of the Red Bull brand has been set out in detail, including the first launch of the Red Bull Energy Drink in 1987 in Austria, the large scale international rollout in Germany and the United Kingdom in 1994, and the launch in Hong Kong in 1999. The Red Bull Energy Drink was being sold in 162 countries in the world in 2014. Exhibits 2 and 3 to Powers’ 1st SD include a list of the first shipments of Red Bull Energy Drink to distribution countries and information of the Red Bull brand.