Red Bull GmbH v Paul Ernest Meier

High Court of New Zealand

Baragwanath J

22, 28 March 2001

This was an appeal from a decision of an Assistant Commissioner of Trade Marks allowing registration of the mark BULL RUSH in class 33.  His Honour had previously delivered an interim judgment in favour of the appellant.  This judgment was delivered following further argument. 

The appellant manufactured a well-known energy drink called RED BULL.  It was the registered proprietor in New Zealand and elsewhere of the trade mark RED BULL in class 32.  It was also the registered proprietor of the mark VODKA BULL in class 33 and had applied for the mark BULL in class 33.

The appellant had also used the mark BULL RUSH to denote a cocktail consisting of its RED BULL energy drink mixed with vodka.  As part of a marketing campaign, the appellant had produced “cocktail cards” which were distributed to bars and nightclubs around New Zealand.  One of the cocktails listed on those cards was the “Bullrush” cocktail. 

The appellant appealed the Assistant Commissioner’s decision to register the mark BULL RUSH in class 33 on three grounds:

1. The appellant was the proprietor of the trade mark on the basis of its prior use of the mark;

2. The respondent’s registration was likely to deceive or cause confusion;

3. The respondent’s registration was unduly similar to the registered trade marks of the appellant.

Held, allowing the appeal:

Section 26 - Proprietorship

(1) Section 2(1) of the Trade Marks Act 1953 defines a trade mark as a sign “[c]apable of distinguishing the goods … of one person from those of another: …”. The phrase “the goods of one person” is not verbally apt to describe a blending by someone  other than the “one person” of the goods of that person with the goods of another after the former goods have left the hands of the “one person”. 

(2) The appellant could not sustain a claim in priority to the respondent to be, or to be entitled to become, the registered trade mark proprietor of BULL RUSH because it had never contemplated a product of its own under that name in circumstances that could give rise to registered trade mark protection. 

Section 16

(1) The evidence was sufficient to establish prima facie such general awareness that BULL RUSH related to a mix of the appellant’s RED BULL product and vodka.

Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50

(2) The use of the very expression previously employed by the appellant made improbable any suggestion that the respondent’s mark was arrived at accidentally. 

(3) The use by the respondent of the mark BULL RUSH to denote its mix of energy  drink and Vodka was likely to confuse a significant number of persons within the market for such drinks.