Energy Drinks, Trade Mark Battles and a Bunch of Bull

If there’s one thing Red Bull hates more than caffeine-free soft drinks, it’s brand drift. And the latest target of its energy-charged enforcement? A would-be beverage mark from China: SeaBull.

In a decision handed down on 5 June 2025, a delegate of the Registrar refused Shandong Fokun Investment Co’s SeaBull trade mark application — finding it deceptively similar to Red Bull’s registered trade marks under s 44 and reg 4.15A of the Trade Marks Act 1995.

The result? SeaBull joins the long list of Red Bull casualties. When it comes to any other “bull” in the beverage ring, Red Bull’s horns are always up.

The trade mark at issue was the simple word mark SeaBull applied for by Shandong Fokun Investment Co., Ltd on 10 November 2022 in class 32 for non-alcoholic drinks including energy drinks.

The applicant claimed “marine extract” inspiration for the name and tried to distance itself from any reference to Red Bull.

Nice try.

Red Bull’s opposition strategy was as charged as their drinks:

• Reputation: Global market leader, sold in 174 countries, with a dominant presence in Australia since 1999.

• Evidence: Brand Finance rankings, Aussie revenue and market share stats, and an empire of media assets — from Red Bull Racing to Red Bull Records.

• Registrations: Relied primarily on IR 1566986 — a stylised BULL mark registered for Class 32 beverages.

The delegate found that, although the competing marks were not substantially identical:

“The suffix ‘Bull’ is identical in substance… aurally, it comprises one of only two syllables… visually, the word ‘Bull’ is emphasised.”

While the addition of the word Sea tried to add a salty twist, it didn’t do enough to dilute the central BULL impression. The delegate found:

• Consumers are likely to read it as Sea + Bull (not a singular new word).

• “Bull” remains the essential, memorable element.

• Conceptually, SeaBull still evokes the idea of a bull — not something distinct enough to overcome the similarities.

The outcome: Real and tangible risk of confusion → Ground under s 44 established.

The applicant didn’t bother to show up to the hearing and didn’t provide evidence of honest concurrent use, prior use, or other extenuating circumstances. That made the path to refusal even smoother.

It’s difficult to win a case when you don’t adduce any evidence and don’t show up – just saying …

Red Bull won the case and, of course, received an order for its costs too.

🧠 IP Mojo Takeaways

• Adding a prefix won’t save you if the remaining mark is dominant and matches a well-known trade mark.

• Red Bull’s enforcement strategy isn’t just for copycats — even marginal similarities to the word BULL in Class 32 can trigger a full opposition.

• For global brands, consistent evidence of market presence, brand diversification, and registered rights are still the gold standard in trade mark opposition proceedings.

In the end, the only thing SeaBull gave Red Bull was another notch on its IP enforcement belt. For smaller beverage players looking to carve out their own brand, the message is clear:

Don’t poke the bull.

🟫 Cantarella Bros v Lavazza: The Espresso Shot Heard Around the IP World

There’s a certain irony in watching a decades-long trade mark fight over a word that literally means “gold” end up in ashes.

After a turbulent three-year legal grind, Cantarella Bros v Lavazza has finally run its course — with the Full Federal Court siding squarely with Lavazza and the High Court rejecting Cantarella’s special leave application in June 2025.

At stake? Ownership of the word ORO — Italian for “gold” — as a trade mark for coffee.

🧾 ORO, Take Two: The Sequel to Modena

You might recall Modena, the 2014 High Court showdown where Cantarella successfully defended ORO as being inherently adapted to distinguish Cantarella’s goods from those of others. That win secured their mark’s survival from a descriptiveness challenge under s 41 of the Trade Marks Act 1995.

But Modena never tested ownership. And that’s where things have now unravelled.

Enter Molinari — an Italian roaster whose Caffè Molinari Oro blends were apparently in Australia before Cantarella’s first use. Lavazza, whose own Qualità Oro has long glittered on shelves, used this to challenge Cantarella’s ownership under section 58 of the Act.

⚖️ The Trial Decision (2023): Ownership Is Everything

In October 2023, Justice Yates in the Federal Court found that Molinari used the mark ORO in a trade mark sense in Australia as early as 1995 — a full year before Cantarella. That meant Cantarella wasn’t the first user, and thus not the true owner of the ORO mark.

Even though Molinari hadn’t used it themselves for years, the court found no clear evidence of abandonment.

The result? The ORO registrations were invalidated. No valid mark, no infringement.

🧭 The Appeal (2025): Nice Try, But Still No Gold

Cantarella ran multiple grounds on appeal. They challenged the trial judge’s acceptance of evidence, the interpretation of what constituted trade mark use, and even suggested they had become an “honest concurrent user” (which might have had flow-on effects allowing them to keep it registered).

But the Full Federal Court wasn’t buying it. It affirmed the trial findings — particularly that:

• Molinari’s use of ORO was use as a trade mark,

• Molinari’s rights had not been abandoned,

• and Cantarella’s own arguments about honest concurrent use were too little, too late (that did not raise that argument at trial so could not raise it as a new ground on appeal … the result in that regard might have been different if they had raised it at trial).

They also dismissed Lavazza’s own cross-appeal on costs and distinctiveness. No party walked away with an espresso shot of victory on that front.

🏛️ High Court: Application Denied

On 12 June 2025, the High Court rejected Cantarella’s special leave bid — making the Full Court’s decision final.

It’s the second time Cantarella’s ORO mark has come before the High Court. But this time, the door was firmly closed.

🥊 Why It Matters

This is the latest in a string of cases reminding IP owners that first use means first rights — even if you think you’ve been using a mark for decades.

Some takeaways:

• Section 58 (ownership) is a potent weapon in cancellation proceedings.

• Evidence of early use — even murky invoices and decades-old packaging — can carry surprising weight.

• A prior foreign user who supplied products into Australia through distributors can claim ownership if the mark was used as a badge of origin here.

• The High Court’s Modena decision still stands, but it doesn’t immunise a mark from being struck out on ownership grounds.

☕ Final Sip

Cantarella’s gold-standard run with ORO has come to an end. With the marks cancelled and infringement claims torpedoed, it’s back to the blend board.

Meanwhile, Lavazza walks away vindicated — perhaps with a slightly smug crema.

Series Killers: When IP Australia Oversteps the (Descriptive) Mark

So you’ve filed a series trade mark in Australia. The marks are visually identical except for a single word that tweaks the service type — say, “BURST PLUMBING”, “BURST CLEANING”, “BURST GARDENING”.

All good, right?

Not if you ask IP Australia. According to the Office Manual, if your differentiating word describes only some of the services listed — even if it’s a totally non-distinctive, snore-worthy adjective — your series could be headed for rejection.

The rationale? That descriptive differences must apply to all of the goods/services claimed. Not some. Not most. All.

But is that legally correct?

Let’s unpack this.

The Law (Actually – and Not the Manual)

Section 51(1) of the Trade Marks Act 1995 (Cth) says you can register a series if:

“…the trade marks resemble each other in material particulars and differ only in respect of one or more of the following matters:
(a) statements or representations as to the goods or services  in relation to which the trade marks are used or are intended to be used;
(b) statements or representations as to number, price, quality or names of places; or
(c) the colour of any part of the trade mark.”

So there is a legal restriction — but it’s not about whether the descriptive term applies to all of the goods or services. It’s about whether the difference falls into one of the above three categories.

If your only point of difference is a generic descriptor like “PLUMBING” or “CLEANING” — that’s likely a “statement as to the services” under paragraph (a). ✅ Tick.

Whether that statement applies to all of the services? That’s not part of the statutory text. That’s IP Australia adding friction by policy — not by law.

The Practice (Not the Law)

IP Australia’s position is that if “CLEANING” only refers to a handful of the listed services — say, home cleaning and commercial premises — while your broader list also covers plumbing, garden maintenance, and pest control, then the marks in the series are no longer sufficiently aligned for a single registration.

Their concern: you’re using the series construct as a backdoor to bulk file a grab bag of marks that lack genuine commonality.

But here’s the catch: section 51(1) does not impose a requirement that the differing matter — like “CLEANING” — must describe all of the goods or services. The section simply requires that:

1. The marks resemble each other in material particulars, and

2. The differences fall only within one or more of the categories listed:

   • statements about the goods/services,

   • statements about number, price, quality or place, or

   • colour of part of the mark.

So, if “CLEANING” is a statement about services (and it is), and the marks still resemble each other in their key features (say, the word “BURST” in a bold red typeface with a splash logo), then the Act is satisfied.

The idea that every descriptive word must apply to all services is IP Australia policy, not law. It’s not in the Act. It’s not in the Explanatory Memorandum. It’s simply a convenient threshold applied to keep the register tidy — which may be operationally defensible, but not legally required.

What’s a Brand Owner To Do?

If you’re filing a series mark where the only difference is a descriptive word that applies to some — but not all — of the listed services, you’ve got two choices:

1. Play nice: Redraft your specification to group services so that each descriptor applies across the board. That means breaking up the series and filing multiple applications.

2. Push back: If the examiner raises an objection, go back to the legislation. Section 51(1) only requires that:

   • The marks resemble each other in material particulars, and

   • The differences fall only within the three specified categories.

You may not win every time, but you’ll be on solid legal ground — and might just push the boundaries of a policy that’s grown a little too rigid for its boots.

There’s no additional legal requirement that the differing statement about services must relate to all of them. That’s a policy position, not a statutory one.

So if “BURST PLUMBING” and “BURST CLEANING” share all core branding elements and differ only by a word that is a statement about services — you’ve met the test under the Act.

Bottom Line

IP Australia’s insistence on descriptive uniformity across the entire class spec is not supported by s 51(1) of the Act. The only legal requirement is that the marks:

• Resemble each other in material particulars, and

• Differ only in respect of statements as to goods/services, price, quality, place, or colour.

Everything else? That’s Office convenience, not legislative command.

So don’t be afraid to push back.

And if that fails… well, split the applications, swallow the extra fee, and tell your accountant it was a “protest expense” … the cost of resisting bureaucratic overreach.

Crunch Time for CRUNCHIEZ: Cadbury Blocks Rival Chocolate Mark

In a sweet victory for brand owners, Cadbury UK Limited has successfully opposed the registration of the trade mark CRUNCHIEZ SURPRIZE in Australia, convincing the Trade Marks Office that the name was too close for comfort to its iconic CRUNCHIE mark.

Greek confectionery importer Relkon Hellas applied to extend international protection for its mark CRUNCHIEZ SURPRIZE (featuring stylised graphics) for use in relation to chocolate and confectionery in Class 30. Cadbury, relying on decades of use of the CRUNCHIE mark in Australia, opposed the application on several grounds — but ultimately succeeded on one: section 60 of the Trade Marks Act 1995 (Cth).

Under s 60, a trade mark may be refused if another mark had acquired a reputation in Australia before the relevant date, and the use of the new mark would be likely to deceive or cause confusion.

Here’s how the Delegate broke it down:

Reputation:
Cadbury’s CRUNCHIE has been sold in Australia since the 1950s and enjoys widespread recognition. Sales figures, advertising spend, historical ads, and retail presence all pointed to a strong reputation in Australia, particularly for chocolate and confectionery.

Similarity of Marks:
While not identical, CRUNCHIE and CRUNCHIEZ SURPRIZE share key elements:

• The word CRUNCHIEZ was viewed as a near-plural of CRUNCHIE, differing by just one letter.

• The additional term SURPRIZE was considered descriptive and did little to distinguish the overall impression.

• Stylisation differences weren’t enough to avoid confusion.

Likely Confusion:
The Delegate found that ordinary consumers could reasonably wonder whether CRUNCHIEZ SURPRIZE products were from the same source as Cadbury’s CRUNCHIE line — especially when both appeared in close proximity in stores like Kmart and The Reject Shop.

Interesting side note – the evidence of where the competing brands sat in places like K-mart and The Reject Shop was adduced not by Cadbury, but by Relkon Hallas, whose lawyers used that evidence to submit that because the brands were not literally side-by-side, this supported a conclusion that there would be no confusion.

That turned out to be a bit of a strategic fail as the Delegate thought this evidence supported a finding of confusion because it was clear evidence that the relatively new CRUNCHIEZ SURPRIZE mark was being advertised in close proximity to the long-standing and very famous CRUNCHIE mark.

Oops.

The Outcome
Protection for CRUNCHIEZ SURPRIZE was refused in full. Cadbury was awarded costs, and Relkon Hellas left with a lesson in brand proximity.

Key Takeaways for IP Owners

• Reputation is a powerful shield. Long-standing brand presence, even on basic goods like chocolate bars, can stop later marks in their tracks.

• Adding a “z” won’t save you. Minor spelling tweaks and descriptive add-ons (like “Surprize”) rarely neutralise the risk of confusion.

• Stylisation matters — but not enough. Graphic flourishes won’t rescue a mark if the words dominate and invite association with a famous brand.

• Proximate promotions can pummel you. If your goods end up shelved near a well-known competitor, that visual proximity will weigh heavily in the analysis.

IP Mojo Takeaway:
If you’re naming a new chocolate product and your trade mark sounds like a Cadbury classic… you’re probably skating on thin nougat.

Bed Bath ‘N’ Table Not Throwing In the Towel

What happens when your new brand smells a little too much like the towels next door?

If you’re Global Retail Brands Australia (GRBA) — the team behind House and its spinoff House Bed & Bath — you might find yourself embroiled in a multi-front legal fight with long-standing soft homewares heavyweight Bed Bath ‘N’ Table (BBNT). And if you’re BBNT, you might soon be on your way to the High Court of Australia to argue that while a trade mark might not be confusing, a brand strategy can still mislead.

GRBA, long known for “hard homewares” like kitchenware, took a foray into “soft homewares” by launching a new store format under the brand House Bed & Bath. The problem? BBNT had been using Bed Bath ‘N’ Table for over four decades and held multiple trade mark registrations.

BBNT sued under both the Trade Marks Act 1995 and the Australian Consumer Law (ACL), alleging trade mark infringement and misleading and deceptive conduct. While the primary judge in the Federal Court agreed GRBA’s branding was misleading under the ACL (and upheld passing off), they did not find trade mark infringement. The marks weren’t deceptively similar, said the Court — but the Court found  GRBA’s conduct was misleading/deceptive and also constituted passing off.

GRBA appealed, and in a twist befitting a soap opera about linen stores (Doylies of Our Lives? Folded and the Beautiful?), they won. The Full Federal Court overturned the misleading conduct and passing off findings — not because BBNT didn’t have a reputation, but because that reputation didn’t extend far enough to make “Bed & Bath” independently distinctive. The court also pointed to widespread descriptive use of “bed” and “bath” by other retailers and found that GRBA’s actions, while perhaps careless or even opportunistic, didn’t cross the legal line into deception.

BBNT sought special leave to appeal to the High Court. And now the top court in the land will get to decide how much weight to give to brand reputation, wilful blindness, and near-miss branding in Australia’s consumer protection and passing off law.

For trade mark lawyers and marketing advisors, this case is shaping up to be the test of the limits of brand mimicry in retail. Can a well-established business with a household brand name claim monopoly over combinations of common words like “bed” and “bath”? And what level of consumer confusion — or intent to confuse — is enough?

The main takeaways seem to be:

• Trade mark law and consumer law don’t always walk in lockstep. You can lose one claim and win the other, based on different thresholds and factual assumptions.

• “Wilful blindness” is not enough by itself. The Federal Court was clear that being strategic (or even a bit cheeky) isn’t the same as being legally deceptive — though the High Court may weigh in differently.

• Descriptive branding is always a high-risk game. If your mark relies on common category words (like “bed” and “bath”), even 40 years of use might not give you exclusive rights.

• Appealing to the High Court is rare and consequential. This will be a must-watch for IP lawyers — and one that could reshape how consumer law operates alongside trade mark protection.

Stay tuned for when the High Court beds down the final answer. For now, the towels are fluffed, the pillows are puffed, and the soft homewares sector is on notice.

For the Hitchhiker’s Guide fans, hey, who knows, maybe the HC will make their decision next year on Towel Day?