August 31, 2018
The Intellectual Property High Court finds the Red Bull marks to be highly famous not only for energy drinks but also for products for automobiles
The Intellectual Property High Court (the "IP High Court") reversed the decision of JPO Trial Board in favor of Red Bull on the invalidation trial regarding Red Bull marks and found the Red Bull marks to be highly famous not only for energy drinks but also for products for automobiles. (Case No. 2017 (Gyo-Ke) 10080, judgment issued on December 25, 2017)
Bullsone Co., Ltd. (the "Bullsone"), a Korean company and an auto care products manufacturer, filed a trademark application with the Japan Patent Office (the "JPO") on October 4, 2013 for the following mark and designating various goods for automobiles in classes 1, 3, 4 and 5 as follows:
[Goods applied for]
Class 1: Detergent additives to gasoline; fuel-saving preparations; chemical additives to motor fuel; anti-tarnishing chemicals for windows; anti-freezing preparations; oil cement [putty]; chemical preparations for decarbonising engines; chemical additives for oils; glass-frosting chemicals; anti-puncture preparations; ..
Class 3: Antistatic preparations for household purposes; rust removing preparations; paint stripping preparations; canned pressurized air for cleaning and dusting purposes; perfume and flavour materials; incense; detergents for automobiles; automobile polishes; ..
Class 4: Dust laying compositions; dust removing preparations; lubricants; dust binding compositions for sweeping; oils for the preservation of leather; additives, non-chemical, to motor fuel; lubricating oil for motor vehicle engines; gas for lighting; motor fuel; non-chemical additives for industrial oils and fuels.
Class 5: Deodorants, other than for human beings or for animals; insect repellents; insect repellent incense; air purifying preparations; insecticides; disinfectants for hygiene purposes; fumigating sticks; fumigating pastilles; ..
After examination, the JPO has granted registration for Bullsone's disputed mark on April 18, 2014.
Red Bull AG (the "Red Bull"), who manages trademark rights of Red Bull in Japan, filed an opposition against its registration in July 2014, but was unsuccessful.
Red Bull further tried to attack the registration in December 24, 2015, by initiating an invalidation trial based on the grounds that:
- the trademark is confusingly similar with other party's trademark already well-known amongst the public in Japan at the time of filing the application and at the time of granting of the registration (in violation of the Article 4, Provision 1, Item 15 of the Trademark Law);
- the trademark is confusingly similar with other party's trademark already well-known amongst the public in Japan or any other foreign country AND the intended use of the mark is in bad faith both at the time of filing the application and at the time of granting of the registration (in violation of the Article 4, Provision 1, Item 19 of the Trademark Law);
- the registration of such trademark is against public order and morality (in violation of the Article 4, Provision 1, Item 7 of the Trademark Law).
The JPO Trial Board did not find in favor of Red Bull at the invalidation trial. Thereafter, Red Bull further appealed to the Intellectual Property High Court (the "IP High Court") trying to cancel the JPO Trial Board decision.
On December 25, 2017, the IP High Court issued a judgement that reverses the JPO Trial Board decision, and Red Bull finally was successful in cancelling the registration for the Defendant's mark.
The judgement handed over by the IP High Court focused on consideration on Article 4, Provision 1, Item 15 of the Trademark Law, and did not discuss on the rest of the grounds namely Items 19 and 7.
As to Article 4, Provision 1, Item 15, Red Bull argued that they have been using the following Red Bull marks ("Red Bull marks") in relation to offering of energy drinks and endorsing of motor sport races amongst others widely and intensely. Hence these Red Bull marks have been very famous in Japan well before the filing date of the Bullsone's disputed trademark.
In essence, the Red Bull marks comprise of "red bull" in combination with the "yellow circle background" around its head, whereas the Bullsone's disputed trademark comprises of "red bull" positioned right in the middle of the light-brown and shaded shield, and according to the JPO Trial Board, when comparing the details, there are various points that can be distinguished.
The IP High Court held that the Bullsone's disputed mark and Red Bull marks have lots in common in their basic components - yellowish warm and sold colored background, left-pointing and outshooting horns, red colored and dynamic bull in front of the background - and therefore, they can easily be confused visually. In addition, they both can be perceived as "dynamic red bull". Overall, the marks have high level of similarities.
Red Bull has submitted various kinds of evidences for establishing the fame of its marks and based on these materials, the IP High Court admitted its high reputation not only with regards to the energy drinks, but also as to products related to automobile.
Though finding that Red Bull marks cannot be said to have high level of originality, the IP High Court held that they became very famous in relation to products surrounding automobiles well before the filing date of the Bullsome's disputed mark. The goods registered under the Bullsone's disputed mark are related to automobiles and indeed the Defendant is offering goods for automobiles, such as detergent preparations, polishing preparations, air purifying preparations as follows:
The IP High Court found that the consumers of automobile products may not pay careful attention to the trademarks and Red Bull has granted licenses on Red Bull marks to various companies surrounding goods for automobiles and automobile races.
Considering the above facts, the IP High Court held that there is a likelihood that the relevant consumers may consider the Defendant's goods to be related to Red Bull and therefore, the Bullsone's disputed trademark would give rise to confusion with the Plaintiff's trademark or its business and is not registrable in view of Article 4, Paragraph 1, Item 15 of the Trademark Law.Comments
It is the success of Red Bull's continuing efforts which should get credit and it is also notable that the IP High Court has made detailed and careful considerations on the factual arguments.
Written by Ms. Rika Yamazaki (Admitted to California Bar)