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.

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.

21. The Red Bull brand has been extended to other businesses including the Red Bull Media House, Red Bull TV, Red Bulletin, Red Bull Records and merchandising articles. Since 1999, the Red Bull Group has granted more than 460 licenses to third parties for merchandising articles which include model cars, model planes, video games, sunglasses, stationery, luggage, clothing, ski helmets and mobile phone covers.

22. The Red Bull Group organizes a huge amount of sport and culture events annually, such as the participation in Formula One Racing from 1995 and the establishment of the Red Bull Racing team in 2004, the Red Bull Flugtag events, the Red Bull Music Academy world-travelling series of music workshops and festivals, and the Red Bull Thre3Style DJ competition. In Hong Kong, the Red Bull Group has organized and sponsored different events such as the Red Bull Music Academy stop and the Red Bull Flugtag in 2010, the Red Bull Dragon Run and the F1 Showcar in 2011, the Red Bull Thre3Style DJ competition in 2012, the Red Bull Illume photography competition and the Red Bull Soap Box

6 Race, which attracted many participants and spectators and were reported on TV and newspapers. The Red Bull events in Hong Kong from 2004 to 2014 and its sponsored athletes since 2011 are set out in detail, information and photographs of those events are shown at exhibits 5 to 11, and the Red Bull Marks, including the Double Bull Device and Single Bull Device, are featured on many of these materials.

23. The Red Bull Group’s worldwide and Hong Kong sales volume has grown from 2.4 billion and 0.9 million in 1994 to almost 4.7 billion and 4.5 million serving units in 2011. The Red Bull Group has incurred average marketing and media expenses of €1.4 billion and €305 million per annum respectively from 2008 to 2011 worldwide. In Hong Kong, the average marketing and media expenses were €1.8 million and €513,500 per annum for the same period. Copies of selected invoices and marketing and promotional materials in Hong Kong are shown at exhibits 12 to 14, and the Red Bull Marks, including the Double Bull Device and Single Bull Device, are featured on many of these materials. Included at exhibit 15 are copy screenshots of video clips of the Red Bull activities.

24. According to the Eurobrand 2011 ranking published by the European Brand Institute, Red Bull was ranked number 24 and 63 of the most valuable brand corporations in Europe and worldwide respectively. It is deposed that the famouness of the Red Bull brand and marks has been confirmed by various courts and trade mark offices in Europe and the world, and the Red Bull Marks are entitled to protection as well-known trade marks under the Paris Convention. A summary of some main cases are set out in a table in Powers’ 1st SD and at exhibit 18 thereto.

25. The Red Bull Marks are protected in 200 jurisdictions worldwide, including Hong Kong. The Red Bull Group is also the applicant and holder of BULL series marks worldwide, which include BULL, BULL RUSH, LORD BULL, ENERGY BULL, FLYING BULL, SPEEDY BULL, etc. and the term “BULL” is frequently used both by the Red Bull Group and the public to designate its product, its teams and its marketing activities, such as the “Racing Bulls”,

7 “Flying Bulls” and “Bull’s Corner”. The Red Bull Group owns the Doube Bull Device mark in 198 jurdistions and the Single Bull Device mark in 114 jurisdictions.

26. The Red Bull Group first registered the Single Bull Device in Austria in 1998 and currently owns about 432 trade mark registrations and applications for the Single Bull Device around the world. The Red Bull Marks, including the Single Bull Device, have been used or registered around the world and in Hong Kong in relation to goods similar or identical to those of interest to the Applicant. With regard to the Red Bull Marks which are owned by TCP, it is deposed that TCP, being the joint venture partner of the Opponent in Hong Kong, share with the Red Bull Group the ownership of those marks in Hong Kong.

27. The Red Bull Group is also the registered owner of numerous Red Bull domain names in as many as 196 countries and in Hong Kong. Exhibit 19 shows printouts of the relevant Hong Kong website which prominently features the Red Bull Marks including the Single Bull Device.

28. The Red Bull Group has licensed the Red Bull Marks for the manufacture and sale of a wide range of goods and generated goodwill. Exhibits 22 to 25 include screenshots of the Red Bull Shop and some leading online shopping portals showing goods of caps, T-shirts, jackets, shorts, bags, umbrellas, etc. under the Red Bull Marks with shipping option to Hong Kong.

29. The Red Bull Group organizes a great number of motorsport events annually around the world including Hong Kong and officially owns a Formula One car racing team known as “Red Bull Racing” which regularly participates in and has won F1 races around the world. The Red Bull Racing has received a substantial amount of publicity in media and the Red Bull Marks including the Single Bull Device are featured prominently on the F1 racing car as well as all auxiliary merchandise. Included at exhibit 26 are printouts of local and international internet reports and screencaps of videos on the Opponent’s activities in Hong Kong under or by reference to the Red Bull Marks from 2006 to 2014.

30. By showing many bull marks of different designs on the Hong Kong trade mark register at exhibits 20 and 21, it is averred that there are numerous ways to depict

8 a bull and it cannot be sheer coincidence for the subject mark to resemble the Single Bull Device so closely. Moreover, decisions of other intellectual property offices are cited in support of the averment that the subject mark is similar to the Red Bull Marks and the use of the subject mark on the designated goods in class 5 may cause confusion.

31. Comparison and submissions on the similarity of the respective marks and goods as well as comments on the Applicant’s Counter-statement are provided in Powers’ 1st SD. Amongst others, it is averred that the Single Bull Device or its mirroring counterpart has been used on its own substantively worldwide including Hong Kong, as can be seen from evidence submitted, which leads the members of the public to associate the Red Bull Group with the Single Bull Device on its own. I may refer to the relevant points as and when appropriate in the latter part of this decision.

32. Zhang’s SD only confirms that Powers’ 1st SD was signed by the declarant in the presence of the Notary Public Mag. Dr. Markus Mayrhofer in Austria.

33. Powers’ 2nd SD mainly consists of the Opponent’s comments on and submissions in relation to the Applicant’s evidence stated in and exhibited to Lee’s SD. It is averred, inter alia, that in the absence of any concrete sales figures for Hong Kong market and sales breakdown for the Applicant’s goods in class 5, the evidence does not show that the Applicant has acquired any goodwill or reputation in respect of the subject goods bearing the subject mark in Hong Kong. The Opponent also provides an update of the status of the global trade marks disputes between the Red Bull Group and the Applicant in relation to the subject mark or its mirroring counterpart. Exhibits JAP-1 and JAP-2 to Powers’ 3rd SD include copies of decisions and refusal notifications made in various jurisdicitons in favour of the Opponent, a summary of the relevant parts of the decisions, and copies of trade mark records or documents of the relevant applications or registrations in various jurisdictions.

34. Powers’ 3rd SD only consists of a decision issued on 7 February 2018 in relation to New Zealand trade mark application no. 1016924 in which the Red Bull Group succeeded in the opposition to a mark, which is the mirroring equivalent

9 of mark A of the subject mark, in classes 1, 3, 4 and 5. A copy of the decision is displayed at exhibit JAP-3.

The Applicant’s evidence of use

35. As set out in Lee’s SD, the Applicant is a company organized and existing under the laws of Republic of Korea since 8 March 2001 that manufactures and supplies chemical and auto care products including but not limited to the subject goods. Since at least from August 2011, the Applicant has been extensively and continuously using and promoting the subject mark or its mirroring counterpart with the words “Bullsone” or “I Love My Car” (collectively “Variants”) on its products including the subject goods, and in particular since 27 October 2011 in Hong Kong. There were relevant sales of 14,802 pieces and US$33,611 in 2011 in Hong Kong. Exhibits CHL-1 to CHL-5 includes a list of the relevant goods being sold in Hong Kong, and copies of catalogues, financial statements, commercial invoices, shipping documents, export permits, etc.

36. The Applicant has secured and maintained registrations of the subject mark or the Variants in various jurisdictions. Exhibits CHL-6 to CHL-8 include information of registrations, copies of opposition decisions made in favour of the Applicant in Korea, Japan, Thailand and United Arab Emirates, and a summary of the status of the relevant trade mark disputes globally.

37. The Applicant is said to have accrued goodwill and reputation through the extensive use, promotion and registration of the subject mark which has become distinctive of the Applicant’s business and the Applicant’s goods.

38. It is averred that the registration and use of bull device as part of a mark in relation to goods in class 5 is common in Hong Kong and the public has been prepared to pay more attention to the other distinguishing features of the respective marks, the co-existence of the subject mark and the Red Bull Marks should therefore cause no confusion to the public. Exhibit CHL-9 contains printouts from the online trade mark register of Hong Kong showing the co-existence of various marks consisting of bull device in class 5.

Opposition under section 12(3) of the Ordinance

39. Section 12(3) of the Ordinance provides as follows:

“A trade mark shall not be registered if–

(a) the trade mark is similar to an earlier trade mark;

(b) the goods or services for which the application for registration is made are identical or similar to those for which the earlier trade mark is protected; and

(c) the use of the trade mark in relation to those goods or services is likely to cause confusion on the part of the public.”

40. According to section 7(1) of the Ordinance, in determining whether the use of a trade mark is likely to cause confusion on the part of the public, the Registrar may take into account all factors relevant in the circumstances, including whether the use is likely to be associated with an earlier trade mark.

41. Section 12(3) of the Ordinance is similar in effect to section 5(2) of the UK Trade Marks Act 1994 which implements Article 4(1)(b) of the First Council Directive 89/104 of 21 December 1998 of the Council of the European Communities. In determining the issue under section 12(3), I take into account the guidance and principles provided by the European Court of Justice (ECJ) in Sabel BV v Puma AG [1998] R.P.C. 199, Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc. [1999] R.P.C. 117, Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel B.V. [2000] F.S.R. 77 and Specsavers International Healthcare Ltd v Asda Stores Ltd [2012] F.S.R. 19. Such principles have been adopted in Hong Kong and recently by the Court of Appeal in Tsit Wing (Hong Kong) Co Ltd v TWG Tea Co Pte Ltd [2015] 1 HKLRD414. In Tsit Wing, Lam VP cited (at paragraph 35) the following propositions (which were endorsed by Kitchen LJ in Specsavers (at paragraph 52)) as useful guidelines for assessing likelihood of confusion –

“On the basis of these and other cases the Trade Marks Registry has developed the following useful and accurate summary of key principles sufficient for the

11 determination of many of the disputes coming before it:

(a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

(b) the matter must be judged through the eyes of the average consumer of the goods or services in question, who is deemed to be reasonably well informed and reasonably circumspect and observant, but who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them he has kept in his mind, and whose attention varies according to the category of goods or services in question;

(d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

(e) nevertheless, the overall impression conveyed to the public by a composite trade mark may, in certain circumstances, be dominated by one or more of its components;

(f) and beyond the usual case, where the overall impression created by a mark depends heavily on the dominant features of the mark, it is quite possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

(g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks, and vice versa;

(h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

(i) mere association, in the strict sense that the later mark brings the earlier mark

12 to mind, is not sufficient;

(j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense;

(k) if the association between the marks causes the public to wrongly believe that the respective goods [or services] come from the same or economically-linked undertakings, there is a likelihood of confusion.”

42. Section 12(3) essentially prohibits the registration of a trade mark which would be likely to cause confusion on the part of the public as a result of its being similar to an earlier trade mark and because it is to be registered in respect of goods the same as or similar to those the subject of the earlier trade mark. I must therefore consider whether there are similarities between the subject mark and the Opponent’s trade marks and the goods covered, and whether they would combine to create a likelihood of confusion.

43. For the Opponent’s pleaded marks which have a date of the application for registration earlier than that of the subject mark, each of them must be considered in turn for the purpose of determining whether it prevents acceptance of the subject application for registration under section 12(3) of the Ordinance (Torremar Trade Mark [2003] R.P.C. 4).

Distinctiveness of the Opponent’s marks

44. Amongst the Opponent’s pleaded marks set out at Annex, I will first consider the

“ ” mark which consists of the English words “Red Bull” with the Double Bull Device underneath (“Red Bull Composite Mark”) as I find it has the closest resemblance to the subject mark. If the Opponent cannot succeed on the section 12(3) ground by relying on this mark, its reliance on the other marks, which have even less resemblance to the subject mark, must also fail. In the circumstances, for the purpose of section 12(3), I will focus on the comparison of the subject mark to the Red Bull Composite Mark only.

45. As neither the term “RED BULL” nor the Double Bull Device is descriptive or

13 laudatory of the Opponent’s goods, I find the Red Bull Composite Mark has a high level of inherent distinctiveness. From the Opponent’s evidence which is related to Hong Kong and pre-dated the relevant date, I do not find any use of the Red Bull Composite Mark on goods covered by or similar to those in class 5 at all. As such, I do not find it has acquired any enhanced distinctiveness through use in relation to goods in class 5 in Hong Kong.

Comparison of Marks

46. In comparing the marks, it is not appropriate to concentrate on the similarities to the exclusion of the differences between the marks and one cannot assume that because an element of the marks is identical the marks are similar unless the identical part constitutes the dominant element in the overall impression created by each mark, such that all the other components are insignificant (Kerly’s Law of Trade Marks and Trade Names (15th edition), paragraph 9-093).

47. I bear in mind that an average consumer normally perceives a mark as a whole and does not proceed to analyse its various details, and rarely has the chance to make direct comparisons between marks but must instead rely upon the imperfect picture of them he has kept in his mind. I also take note that the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components.

48. As both the subject mark and the Red Bull Composite Mark do not have any colour claim, the right to use the marks is not limited to a particular colour. It is trite law that a mark registered in black and white is registered in respect of all colours (Tsit Wing, at paragraph 48). I must consider the notional (or normal) fair use of both marks in relation to their respective specifications, and the fact that both marks have been often depicted in the form of a red bull against an orange or yellow background, as shown in the evidence, is an example of their use in a notional fair manner (Kerly’s Law of Trade Marks and Trade Names, 15th Ed, para. 9-084).

49. Mr. Chau submits that the Red Bull Marks and the subject mark share the bull as the same dominant feature, and the public has become accustomed to identifying

14 the bull (as opposed to the words) as the dominant and distinguishing feature of the Red Bull Marks due to the extensive use of the Single Bull Device alone by the Red Bull Group in its advertisements and promotional events. He also submits that the absence of “double bull” in the subject mark is not sufficient to overcome the overall similarity between the marks, and the respective orange sun and orange shield background of the marks, in actual use, are highly similar. Decisions of other intellectual property offices are cited in support of his submission.

50. The Applicant argues that it is not correct to merely take out one element from the respective marks and ignore the other elements for comparison as it is trite law that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. It is submitted that the respective marks are dissimilar as the subject mark, with the idea of a galloping or leaping bull, is distinguishable from the Red Bull Composite Mark with the prominent words “RED BULL” and the concept of two fighting bulls.

51. The subject mark is a figurative mark consisting of a galloping bull against a shaded shield. Since the shield device only serves as a background, I consider the bull device is the dominant and distinctive element of the subject mark. The Red Bull Composite Mark consists of the word element “Red Bull” above a device of two charging bulls against a circular line. As generally speaking words speak louder than devices and the word element “Red Bull” is more prominent in size and position, I consider it as the dominant and distinctive element of the Red Bull Composite Mark.

52. Visually, I find the respective marks are similar to a low degree in view of the prominent size and position of the word element of the Red Bull Composite Mark, but I am mindful that such degree would increase when the respective marks are depicted in the similar colour combination, i.e. a red bull against an orange or yellow background, in actual use as noted from the evidence. Aurally, the Red Bull Composite Mark would be referred to by its word element “Red Bull”, and the subject mark as “Bull” or more specifically “Red Bull” when its bull device is depicted in red as shown in the evidence. I therefore consider

15 they are aurally similar to a medium degree or even identical when the bull device of the subject mark is depicted in red in actual use. Conceptually, I find they are similar to a medium to high degree or even identical since both marks share the concept of “Bull” or more specifically “Red Bull” when the bull device of the subject mark is depicted in red in actual use. Having regard to their visual, aural and conceptual similarities and differences and the effect of imperfect recollection of marks, I consider the Red Bull Composite Mark is similar to the subject mark to a medium to high degree overall.

Comparison of Goods

53. Apparently, I find the subject goods “deodorants, other than for personal use; air purifying preparations; air freshening preparations” and “disinfectants for hygiene purposes” identical or highly similar respectively to the goods “deodorizing preparations, other than for personal use, deodorizing room sprays” and “disinfectants” registered under Trade Mark no. 301822194AB in class 5 in view of their nature and purposes and that they may coincide in terms of producers, customers and distribution channels. For the same reasons, I consider the subject goods “insect repellents; incense (insect repellent-); insecticides; sticks (fumigating-); fumigating pastilles” are identical or highly similar to the “preparations for destroying vermin; fungicides, herbicides” registered under Trade Mark no. 301822194AB in class 5.

Likelihood of Confusion

54. The likelihood of confusion must be appreciated globally, taking account of all relevant factors all of which have a degree of interdependency. The matter must be judged through the eyes of the average consumer of the goods who is deemed to be reasonably well-informed and reasonably observant and circumspect. In this case, the relevant consumers for the goods in question are members of the general public who would exercise an average level of care and attention when purchasing these goods.

55. The likelihood of confusion or deception is not disproved by placing the two marks side by side and demonstrating how small is the chance of error. It is more useful to observe that in most persons the eye is not an accurate recorder of

16 visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole (De Cordova v Vick chemical Co (1951) 68 PRC 103, at page 106; TWG Tea Co Pte Ltd v Tsit Wing (Hong Kong) Co Ltd (2016) 19 HKCFAR 20, at paragraph 46).

56. In the context of consideration of the likelihood of confusion, assessment of the marks must be made by examining each of the marks in question as a whole. However, beyond the usual case where the average consumer perceives a mark as a whole, and notwithstanding that the overall impression may be dominated by one or more components of a composite mark, it is quite possible that in a particular case an earlier mark used by a third party in a composite sign still has an independent distinctive role in the composite sign, without necessarily constituting the dominant element. In such case, the overall impression produced by the composite sign may lead the public to believe that the goods or services at issue derive, at the very least, from companies which are linked economically, in which case the likelihood of confusion must be held to be established (Medion AG v Thomson Multimedia [2006] ETMR 13, at paragraphs 29 to 32).

57. It is the Opponent’s case that the bull is the dominant feature of both the Red Bull Marks and the subject mark, and alternatively, the bull device, even if being not the dominant element, maintains an independent distinctive role in the Red Bull Marks, including the Red Bull Composite Mark. Mr. Chau submits that coupled with the striking similarity between the subject mark and the Red Bull Marks and the similarity between the respective goods, there is a real and high degree of likelihood of the average consumer being confused as to the trade origin. The Applicant submits that given the low similarity of the respective marks and goods, consumer confusion will not be caused even if the subject mark and the Red Bull Marks, including the Red Bull Composite Mark, co-exist in the market.

58. In the present case, I do not think I need to resort to the concept of independent distinctive role to help me evaluate the significance of the bull device in the Red Bull Marks. The concept of “independent distinctive role” suggests that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark. Given that I have already found

17 that the bull device constitutes the dominant element of the subject mark, there is no need to explore further whether it plays an independent distinctive role. I have held that the Red Bull Composite Mark has a high level of inherent distinctiveness and the word element “Red Bull” is the dominant and distinctive element in the Red Bull Composite Mark. The subject mark has been found to be similar to the Red Bull Composite Mark to a medium to high degree and the subject goods are identical or highly similar to the goods registered under Trade Mark no. 301822194AB in class 5. It is well established that a lesser degree of similarity between marks may be offset by a greater degree of similarity between the goods, and vice versa. Taking into account the combined effect of all of the above considerations, when the subject mark is used in relation to the subject goods, I consider that the average consumer would be confused into thinking that those goods and the goods offered under the Red Bull Composite Mark come from the same or economically-linked undertakings.

59. Since there is no evidence before me of the extent of use of the other marks containing bull devices on the register of trade marks, I do not find the existence of those marks of any assistance to the Applicant’s submission that the subject mark should equally be allowed to co-exist with the Red Bull Marks, including the Red Bull Composite Mark, without causing any confusion.

60. The opposition under section 12(3) therefore succeeds in respect of the subject goods. I would like to add that as the opposition under 12(3) has succeeded on the basis of the Opponent’s earlier registration in class 5 under Trade Mark no. 301822194AB, which has a filing date earlier than the date of priority claim made by the Applicant, my decision would not be different even if the priority claim is considered to be validly made.

61. It is pleaded in the Counter-statement that where necessary, the Applicant will rely on “honest concurrent use” and/or “special circumstances” under section 13 of the Ordinance, but such grounds are not pursued by the Applicant in the written submissions filed for the hearing.

62. Since the opposition succeeds under section 12(3), I am not required to consider further the other grounds under other sections of the Ordinance.

Costs

63. As the opposition has succeeded, I award the Opponent costs. Subject to any representations as to the amount of costs or calling for special treatment, which either party makes within one month from the date of this decision, costs will be calculated with reference to the usual scale in Part I of the First Schedule to Order 62 of the Rules of the High Court (Cap. 4A) as applied to trade mark matters, unless otherwise agreed between the parties.

(Connie Law) for Registrar of Trade Marks

26 July 2019

Annex

Trade Mark Trade Mark Application/ Class No. Registration Date 1 301822194AA1 27-01-2011 Class 4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; lanolin; candles and wicks for lighting. 2 301822194AB 27-01-2011 Class 5 Pharmaceutical and veterinary preparations, hygienic preparations for medical purposes, including fortifying and strengthening preparations, namely vitamin preparations and tonics and preparations and products containing minerals and/or vitamins and/or trace elements for health purposes; traditional Chinese medicines; medicinal infusions including herb teas for medicinal purposes; dietetic substances adapted for medical use, appetite suppressants for medical purposes; chewing gum, fruit gums and sweets for medical use; food for babies; plasters, materials for dressings; napkins for the sick; hygienic articles for women (hygienic products for medical use), namely sanitary towels, panty liners, tampons, sanitary pants; chemical contraceptives; material for stopping teeth, dental wax; adhesives for dentures, dental mastics; disinfectants; deodorizing preparations, other than for personal use, deodorizing room sprays; preparations for destroying vermin; fungicides, herbicides. 3 302012200 22-08-2011 Class 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; walkie-talkies; portable and mobile telephones and parts, spare parts and equipment, namely holders and sheaths and accessories, namely cables, plugs, adaptors;

1 Trade Mark no. 301822194 for classes 1 to 5 was set out in the Notice of Opposition, which was divided into 301822194AA and 301822194AB and registered for class 4 and class 5 respectively.

20 batteries, accumulators, charging devices for accumulators for wireless mobile phones; subscriber identity module cards, also for use with portable and mobile phones; mobile phone face plates; ring tones (being downloadable ringtones), downloadable sound, music, image and video recordings, interactive games played on computers; photocopying apparatus and machines; magnetic data carriers, including video tapes, records; personal stereos; automatic vending machines and mechanisms for coin-operated apparatus; automatic cash dispensing machines, ticket dispensers, automatic photographic booths; apparatus for games adapted for use with television receivers only; amusement apparatus for use with an external display screen or monitor; cash registers, calculating machines; data processing equipment and computers; machine readable data carriers with programs installed; electronic publications (downloadable); computer programs and software; computer games programs; mouse pads; navigation apparatus for vehicles; protective clothing, including protective spectacles, protective masks, protective helmets, in particular for sports purposes; protective shields, including ear, body and face protective shields; spectacles, spectacle frames, spectacle cases and holders, sunglasses, goggles for sports; headphones; breathing apparatus for divers, swimming belts and water wings; special purpose containers (cases, sheaths, housings) suitable for apparatus and instruments included in this class; light, marker, life-saving and signaling buoys; wind socks; electric batteries and accumulators; magnets, luminous signs, luminous advertising signs; petrol pumps for service stations; fire-extinguishing apparatus; bracelets (Encoded identification-), magnetic; Acoustic conduits, Acoustic couplers, Acoustic [sound] alarms, Aerials, Agendas (Electronic), Amplifiers, Amplifying tubes, Amplifying valves, Answering machines, Antennas, Cabinets for loudspeakers, Cables, Cards (Encoded -), magnetic, Central processing units, Chips [integrated circuits], Computer operating programs, recorded, Computer peripheral devices, Computer programs [programs], recorded, Computer programs [downloadable software], Computer software, recorded, Data media, Data processing

21 apparatus, Electronic notice boards, Hands free kits for phones, High-frequency apparatus, Integrated circuit cards [smart cards], Integrated circuits, Intercommunication apparatus, Junction boxes [electricity], Junction sleeves for electric cables, Laptop computers, Loudspeakers, Magnetic data media, Masts for wireless aerials, Microprocessors, data processing equipment, Navigational instruments, Notebook computers, Personal stereos, Radio pagers, Radiotelephony sets, Range finders, Receivers, Satellite navigational apparatus, Sound recording carriers, Sound recording discs, Sound recording strips, Sounding leads, Sounding lines, Telephone apparatus, Telephone receivers, Telephone transmitters, Telephone wires, Television apparatus, Transmitters [telecommunication], Transmitting sets [telecommunication], Video game cartridges, Video telephones, Wire connectors [electricity], Wireless aerials (Masts for -), Wires, electric, Wires (Telephone -); computer mouse; Racks and Rigs (photographs); Remote control apparatus; signalling panels luminous or mechanical Video screens; Stereoscopes; Stereoscopic apparatus. Class 12 Vehicles; apparatus for locomotion by land, air or water; refrigerated trucks; air cushion vehicles; parachutes; parts for vehicles; parts for apparatus for locomotion by land, air or water; parts for air-cushion vehicles; bicycles and individual parts therefor (included in class 12), bicycle accessories, namely luggage carriers for bicycles, bells for bicycles, dress guards for bicycles, motors for cycles, bicycle pumps, saddle covers for bicycles, stands for bicycles; saddle covers for motorcycles; golf carts and baby carriages; automobile accessories, namely tires, seats and seat covers, trailer hitches, roof racks, ski carriers, mudguards, snow chains, wind deflectors, head rests, safety belts, child safety seats, horns, steering wheels, wheel rims, shock absorbers; covers for vehicle steering wheels; motors for land vehicles. Class 14 Precious metals and their alloys; goods in precious metals and their alloys (included in class 14), including craft objects, decorative

22 objects, keyrings; badges, of metal; jewelry including rings of precious metals, precious stones, including costume jewelry, cufflinks and tie pins; horological and chronometrical instruments; wrist watches and watch straps; clock cases; cases for the aforesaid goods. Class 16 Paper, cardboard and goods made from these materials (included in class 16), including paper towels, table napkins, coasters, covers, filter paper, handkerchiefs of paper, toilet paper, nappies of paper, packaging of paper or cardboard, advertisement boards of paper or card, cards, postcards, greetings cards; packaging containers and bags; printed matter including printed publications, books, newspapers, newsletters, periodicals, magazines, catalogues, prospectuses, leaflets, brochures, folders, manuals, booklets and graphic representations; bookbinding material; photographs, pictures; posters, placards of paper or cardboard, transparencies, flags (of paper); boxes and signboards of paper or cardboard; calendars; clipboards; stationery including pads, pens and pencils, erasers and paperweights; transfers, stickers; labels, including iron-on labels not of textile; adhesives for stationery or household purposes; artists' materials, including drawing, painting and modeling materials and instruments; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (included in class 16); printers' type; printing blocks; slates and black boards; writing and drawing implements and materials; self-adhesive plastic films for decorative purposes; money clips. Class 18 Leather and imitations of leather and goods made from these materials (included in class 18), including bags and other containers not adapted to other objects to be carried and small goods of leather, including purses, pocket wallets, key wallets; hand bags, briefcases, shopping bags, school satchels; backpacks, rucksacks; shoulder straps; animal skins, hides; trunks and travelling bags; travelling sets (leatherware); umbrellas, parasols and walking sticks; whips, harness and saddlery.

23 4 302030651 14-09-2011 Class 25 Clothing, footwear, headgear, including t-shirts, blouses, sweaters, anoraks, wind resistant jackets, aprons, caps, hats, headbands, braces, belts (clothing), money-belts, sun visors; sportswear, footwear for sports, football boots and studs, ski boots; non-slipping devices for shoes; corsetry; babies' napkins of textile. Class 32 Non alcoholic beverages including refreshing drinks, energy drinks, whey beverages, isotonic, hypertonic and hypotonic drinks (for use and/or as required by athletes); beer, malt beer, wheat beer, porter, ale, stout and lager; non alcoholic malt beverages; mineral water and aerated waters; fruit drinks and fruit juices; syrups, essences and other preparations for making beverages as well as effervescent tablets and effervescent powders for drinks and non-alcoholic cocktails. Class 33 Alcoholic beverages (except beers); hot and mixed alcoholic drinks, including alcoholic energy drinks, mulled wine and mixed drinks containing milk; alcoholic malt beverages; wines, spirits and liqueurs; alcoholic preparations for making beverages; spirit or wine-based cocktails and aperitifs; beverages containing wine.

5 302200599AA 23-03-2012 Class 38 Telecommunications; transmission of radio and television programs; electronic bulletin board services; providing telecommunications connections to a global computer network, telecommunications routing and junction services, teleconferencing services, providing user access to a global computer network; providing access to databases; voice mail services.

6 302200599AB 23-03-2012 Class 35 Advertising, including promotion of goods and services and of competitive events, including competitive events of a sporting nature; arranging of advertising; distribution of goods for advertising purposes; layout services for advertising purposes; on-line advertising on a computer network; rental of advertising time on communication media; news clipping services; business organization consultancy;

24 business management; business administration; office functions; organization of trade fairs and exhibitions for commercial or advertising purposes; rental of vending machines; the bringing together, for the benefit of others, of a variety of goods, enabling customers to conveniently view and purchase those goods in a retail store; commercial administration of the licensing of the goods and services of others; compilation of statistics; sponsorship search. Class 42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer programming; data conversion of computer programs and data (not physical conversion); computer system design; conversion of data or documents from physical to electronic media; creating and maintaining websites for others, hosting computer sites; installation of computer software; industrial design; engineering; consultancy in the field of energy-saving; research in the field of environmental protection.

7 301679176 02-08-2010 Class 28 Games and playthings; playing cards, card games; practical jokes (novelties), confetti; gymnastic and sporting articles (included in class 28); gymnastic and sports equipment, including winter sports equipment, including skis, snowboards, ice skates and snowshoes; tennis equipment; angling equipment; special purpose bags for sports equipment, including skis and surfboards, cricket bags, golf and tennis bags; ski bindings, ski poles, edges for skis, coverings for skis; snowboard bindings; balls; dumb-bells, shot puts, discuses, javelins; tennis racquets, cricket bats, golf clubs and hockey sticks; roller skates, inline roller skates; tables for table tennis; decorations for Christmas trees; snow globes; electric or electronic games other than those adapted for use with television receivers only; scale model vehicles, toy vehicles, radio-controlled scale model vehicles, radio-controlled toy vehicles; coin-operated fruit machines and entertainment machines; fencing weapons; sports bows (archery); nets for ball games, tennis nets; fishing tackle, fishing hooks, landing nets for

25 anglers; swimming webs (flippers); paragliders, hang-gliders; skateboards; surfboards, body boards, windsurfing boards; harnesses and masts for sailboards; elbow and knee pads. Class 30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ice cream; honey, treacle; yeast, baking-powder; salt, edible salt, mustard; vinegar, sauces (condiments), dressings for salad; spices; ice; coffee, tea, cocoa and chocolate drinks; iced tea; coffee and cocoa preparations for making alcoholic and non-alcoholic beverages; cereals for human consumption, including oat flakes and other cereal flakes; food flavorings; sweets, candy, fruit gums, chocolate, chocolate products, pralines with liqueur fillings; chocolate mixtures containing alcohol; chewing gums; fruit and muesli bars. Class 34 Tobacco; tobacco products, including cigars, cigarettes, smoking tobacco, chewing tobacco, snuff tobacco; tobacco substitutes (not for medicinal purposes); smokers' articles namely tobacco tins, cigar and cigarette holders, cigar and cigarette cases, ashtrays, humidors, pipe stands, pipe cleaners, cigar cutters, pipes, pipe bags, lighters, pocket equipment for rolling cigarettes, cigarette papers, cigarette cases, cigarette filters; matches. Class 41 Education; providing of training; entertainment, including musical performances and radio and television entertainment; sporting and cultural activities, including the staging of sports competitions; night clubs and discotheque services; organization of trade fairs and exhibitions for cultural, sporting and educational purposes; rental of video tapes and cassettes, CD-ROMs and DVDs, film production; videotaping and microfilming; publication of electronic books and journals on-line, electronic desktop publishing, providing on-line electronic publications, game services provided on-line; providing karaoke services; digital imaging services; music composition services; layout services, other

26 than for advertising purposes. Class 43 Services for providing food and drink, including bar services, cafés, cafeterias, canteens, snack bars, restaurants, self-service restaurants; food and drink catering; temporary accommodation including hotels, boarding houses, holiday camps, tourist homes, motels; temporary accommodation reservations; boarding for animals; rental of transportable buildings, bars and tents; rental of chairs, tables, table linen, glassware and bar equipment.

8 301831554 11-02-2011 Class 32 Non alcoholic beverages including refreshing drinks, energy drinks, whey beverages, isotonic, hypertonic and hypotonic drinks (for use and/or as required by athletes); beer, malt beer, wheat beer, porter, ale, stout and lager; non alcoholic malt beverages; mineral water and aerated waters; fruit drinks and fruit juices; syrups, essences and other preparations for making beverages as well as effervescent tablets and effervescent powders for drinks and

non-alcoholic cocktails.

9 301124423 26-05-2008 Class 32 Non alcoholic beverages including refreshing drinks, energy drinks, whey beverages, isotonic, hypertonic and hypotonic drinks (for use and/or as required by athletes); beer, malt beer, wheat beer, porter, ale, stout and lager; non alcoholic malt beverages; mineral water and aerated waters; fruit drinks and fruit juices; syrups, essences and other preparations for making beverages as well as effervescent (sherbet) tablets and effervescent powders for drinks and non-alcoholic cocktails.