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Taiwan: Red Bull keeps wings to itself

01-10-2015

Crystal Chen and Yiling Liu

The Taiwan Intellectual Property Office (TIPO) affirmed in an administrative opposition decision that Red Bull’s trademark is famous not only for energy drinks, but fashion products as well.

Nissen Holdings Co, a Japanese company, was holding a registered device mark for a bull in classes 14, 18, and 25, covering timepieces, shoes, clothes, bags, etc. Red Bull Asia filed an opposition against the bull mark, arguing that its own bull device marks, although designated for energy drinks only, have become well-known to the relevant consumers in Taiwan before the registration of the opposed mark in May 2012. Red Bull added that such fame was affirmed in precedent by the Intellectual Property Court. 

One of Red Bull’s opposing marks 

red-bull-logo-tsai-lee-chen.jpg

 

During the course of review by TIPO, Red Bull demonstrated evidence of actual use of the opposing marks in association with fashion products. Red Bull alleged that the two sets of trademarks are similar and the products where the marks are used were overlapping, and therefore consumers are likely to be confused.

The opposed mark

opposed-mark-tsai-lee-chen.jpg

The opposed party countered that the design of its trademark was adopted from a common animal—the device of a bull is widely used in the world—so therefore Red Bull had no right to exclude others from using it. The opposed party pointed out that the Japan Patent Office (JPO) had made a decision on the same issue between the same two parties. The JPO determined that the marks are visually different by their distinguishing features—one is the device of an American bison while the other is that of a fighting bull, and that there was no likelihood of confusion.

"Since the opposing marks used in energy drinks have already been famous, there is a prima facie impression that the opposing marks are considerably distinctive."

TIPO’s findings and reasons are summarised as follows:

•  The opposing marks are well-known and operate in diversified goods/services. Based on the presented evidence, TIPO recognised that the opposing marks were not limited to energy drinks but were also used on products in classes 14, 18, and 25, and such uses have been widely disseminated through mass media, internet, etc, in more than 120 countries. It was further determined in at least two preceding judgments from the IP Court that Red Bull has expanded its diversified operation to the fields of timepieces, shoes, clothes, bags, umbrella, key chains, etc, and therefore its marks have become well-known.

•  The two parties’ trademarks are similar. TIPO found that both trademarks are depicted as a bull, as viewed from the side, adopting a head-down position, having an upright tail, having a hunched/curled back, and having the bull’s legs bending inwards towards the belly. The differences in overall impression are minor. Consumers will not make a detailed comparison of the marks but will only rely on their imperfect recollection upon seeing the marks. It was therefore determined that the opposed mark would mislead consumers into thinking the labelled products had originated from the same source as the opposing marks.

•  Level of distinctiveness is high. The opposing marks comprise a bull device and the wording of either ‘Red Bull’ or ‘Toro Rosso’, which does not directly describe, let alone suggest, any information relating to the designated products. Furthermore, since the opposing marks used in energy drinks have already been famous, there is a prima facie impression that the opposing marks are considerably distinctive.

•  Degree of awareness among relevant consumers is high. From the evidence presented, the opposing marks have been used widely in fashion products in Taiwan, whereas the opposed party shows actual use only in Japan. It was found less convincing to believe that Taiwanese consumers had already been familiarised with the opposed mark, and therefore the opposing marks shall deserve greater protection.

As for the JPO’s decision in favour of the opposed mark, TIPO points out that trademark protection is rooted on principles of territoriality. As such, the case was determined based on the evidence and facts in Taiwan.

In view of the foregoing, TIPO concluded that the marks are similar and likely to confuse relevant consumers. Therefore, the registration of the opposed mark was cancelled for violation of the Trademark Act.

Crystal Chen is a partner at Tsai, Lee & Chen. She can be contacted at: cjchen@tsailee.com.tw  

Yiling Liu is the chief of trademarks at Tsai, Lee & Chen. She can be contacted at: trademark@tsailee.com.tw

Crystal Chen, Yiling Liu, Tsai, Lee & Chen, TIPO, Red Bull, JPO

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