Power Horse Energy Drinks GMBH v San Miguel Brewing International Limited (Trademark Registration No. 55988 & 55989 of 2016)
Observed later treatment
No later-treatment classification is recorded for this judgment.
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Holding
The Registrar dismissed the application for cancellation of the RED HORSE trademarks. Held that the marks were not registered in error as no extension of time to oppose had been granted. The marks POWER HORSE and RED HORSE, when assessed holistically, are visually and conceptually distinct despite sharing the word 'Horse'. Energy drinks and beers, though in the same Nice Classification class, differ materially in nature, purpose and consumer expectation. No likelihood of confusion exists. The marks may lawfully coexist on the register.
Outcome
Application for cancellation dismissed; Respondent's trademarks remain validly registered
Facts
Power Horse Energy Drinks GMBH applied to cancel San Miguel Brewing International Limited's RED HORSE trademarks (Nos. 55988 and 55989) registered in Class 32, alleging similarity to its prior POWER HORSE mark and likelihood of confusion. Power Horse claimed the marks were registered in error because it had filed for an extension of time to oppose on 19 June 2020 and subsequently filed a notice of opposition on 27 August 2020, but the marks were registered on 14 September 2020. Power Horse argued that both marks incorporate the word 'Horse' and horse imagery, creating visual, phonetic and conceptual similarities. San Miguel contended that RED HORSE was duly examined and registered, that the marks coexist in over 60 jurisdictions, and that RED HORSE has been used since 1983. The hearing took place on 13 May 2024.
Issues
- Whether the registration of the marks was done in error?
- Whether the marks are confusingly similar?
- What are the available remedies?
Orders
- Application for cancellation dismissed.
- Respondent's marks to remain on the register with all legal protection.
- Each party to bear their own costs.
Rules and key headnotes
Legislation cited (8)
Cases cited (14)
- Pianotist Co. Ltd (1906) 23 RPC 77
- de Cordova v Vick (1951) 68 RPC 103
- Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (Case C-342/97)
- Gut Springenheide GmbH v Oberkreisdirektor des Kreises Steinfurt (Case C-210/96)
- Bravado Merchandising Services Ltd v Mainstream Publishing (Edinburgh) Ltd [1995] 4 All ER 812
- Sabel BV v Puma AG (Case C-251/95)
- South India Beverages Pvt Ltd v General Mills Marketing Inc (No. 961/2013 in CS (OS) 110/2013)
- British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281
- Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97)
- Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592
- In re The Australian Wine Importers Ltd (1889) 41 Ch D 278
- Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84
- In re Jellinek's Application (1946) 63 RPC 59
- Uganda Revenue Authority v Siraje Hassan Kajura & Others (SCCA No. 9 of 2015)
Full judgment
The original judgment as reported. Read the original PDF before relying on any passage.