Energy Beverages LLC v Cantarella Bros Pty Limited

[2019] ATMO 140

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Energy Beverages LLC to an application under section 92 of the Trade Marks Act 1995 (Cth) by Cantarella Bros Pty Limited for removal of trade mark number 1408011 (classes 29, 30) - MOTHER LOADED ICED COFFEE - in the name of Energy Beverages LLC

DELEGATE:

Nicholas Barbey

REPRESENTATION:

Opponent: Siobhán Ryan of counsel instructed by Elizabeth Godfrey of Davies Collison Cave Pty Ltd

Applicant: Michael Green SC of counsel and Angus Lang of counsel

DECISION:

2019 ATMO 140

Trade Marks Act 1995 (Cth) – opposed application for removal under ss 92(4)(a) and 92(4)(b) – no use demonstrated in relevant period – Registrar’s discretion not exercised – registration to be removed.

Background

1. Energy Beverages LLC (‘the Opponent’) is the registered owner of the following trade mark: Registration Number:  1408011

   Trade Mark:  MOTHER LOADED ICED COFFEE (‘the Trade Mark’)

Filing Date:  8 February 2011

Specification:  Class 29: Milk and milk products; flavoured milk beverages; dairy products including milk and yoghurt based products and beverages with or without fruit additives; yoghurt; food supplements and nutritional supplements (other than for medicinal use); natural products in this class incorporating herbal preparations (other than for medicinal use); food supplements with herbs (other than for medicinal use); drinks flavoured with herbs and having a milk base

Class 30: Coffee; tea; cocoa; chocolate; artificial coffee; ice cream; beverages in this class including coffee based beverages, tea based beverages and chocolate based beverages; herbal extracts (other than for medicinal purposes); herbal infusions (other than for medicinal use) and herbal tea (other than for medicinal use)

(‘the Registered Goods’).

1. On 13 February 2018, Cantarella Bros Pty Limited (‘the Applicant’) filed an application based on ss 92(4)(a) and 92(4)(b) of the Trade Marks Act 1995 (Cth) (‘the Act’) seeking complete removal of the Trade Mark from the Trade Marks Register (‘the Register’).

1. The Opponent filed a Notice of Intention to Oppose the removal application on 30 April 2018 and a rectified Statement of Grounds and Particulars on 20 June 2018. The Applicant filed its Notice of Intention to Defend the removal application on 6 August 2018.

1. The Opponent filed evidence in support of its opposition on 28 November 2018. This consisted of a declaration made on 8 November 2018 by Rodney Cyril Sacks, Chief Executive Officer of the Opponent, with Exhibits RCS-1 to RCS-35 (‘Sacks Declaration’).

1. The Applicant did not file evidence in answer.

1. On 5 April 2019, the Opponent requested an oral hearing. The Opponent filed written submissions on 12 June 2019 (‘Opponent’s Submissions’) and the Applicant filed written submissions on 19 June 2019.

1. As a delegate of the Registrar of Trade Marks, I heard the matter in Canberra on 26 June 2019. Siobhán Ryan of counsel and Elizabeth Godfrey of Davies Collison Cave Pty Ltd appeared on behalf of the Opponent. The Applicant was represented by Michael Green SC of counsel and Angus Lang of counsel.

The relevant legal provisions

1. Section 92 of the Act relevantly provides:

Application for removal of trade mark from Register etc.

(4)An application under subsection (1) or (3) (non-use application) may be made on either or both of the following grounds, and on no other grounds:

(a)that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:

(i)  to use the trade mark in Australia; or

(ii)  to authorise the use of the trade mark in Australia; or

(iii)  to assign the trade mark to a body corporate for use by the body corporate in Australia;

in relation to the goods and/or services to which the non-use application relates and that the registered owner:

(iv)  has not used the trade mark in Australia; or

(v)  has not used the trade mark in good faith in Australia;

in relation to those goods and/or services at any time before the period of one month ending on the day on which the non-use application is filed;

(b)that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non-use application is filed, and, at no time during that period, the person who was then the registered owner:

(i)  used the trade mark in Australia; or

(ii)  used the trade mark in good faith in Australia;

in relation to the goods and/or services to which the application relates.

1. Section 101 of the Act relevantly provides:

Determination of opposed application--general

[…]

(3)  If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.

(4)  Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:

(a)    similar goods or closely related services; or

(b)    similar services or closely related goods; to those to which the application relates.

Grounds, relevant period and onus

1. The structure of s 92 of the Act is such that once a ground for removal under s 92(4)(a) or s 92(4)(b) is established, there is generally no utility in determining whether the remaining ground has also been established. This is because establishing one ground for removal sufficiently achieves the purpose of the provision. For reasons that will become apparent, I have therefore confined my consideration to the ground for removal nominated under s 92(4)(b) of the Act.

1. An application under s 92(4)(b) may not be made before a period of five years has passed from the filing date of the application to register the Trade Mark.1 In this matter, the application for the Trade Mark was filed on 8 February 2011 and the removal application was filed on 13 February 2018. As such, this requirement is satisfied.

1. Given the removal application was filed on 13 February 2018, the relevant period in which the Opponent must establish use of the Trade Mark in good faith is the three year period ending on 13 January 2018 (‘Relevant Period’).

1. Pursuant to s 100(1)(c) of the Act, the Opponent bears the onus of rebutting the non-use allegation under s 92(4)(b) of the Act. The relevant standard of proof required is on the balance of probabilities.2

1 See s 93(2) of the Act as it stood prior to amendments to that section brought about by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Schedule 1, Part 3).

2 Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] in respect of oppositions under s 52 of the Act.

Evidence

1. The Sacks Declaration states the predecessor in title of the Trade Mark was The Coca-Cola Company (‘TCCC’). On 12 June 2015, TCCC assigned its portfolio of Australian trade marks associated with the ‘MOTHER line of drinks’ to the Opponent. This portfolio comprised the Trade Mark together with several other trade marks incorporating the word ‘MOTHER’.3

1. The Sacks Declaration outlines the history of use in Australia of the ‘MOTHER line of drinks’. Relevantly, the declarant states TCCC formed an intention to enter the Australian ‘energy drink market’4 in 2006 and ‘MOTHER’ branded beverages were launched in the Australian market in 2007.5

1. According to the declarant, ‘MOTHER’ branded beverages are widely distributed to retail outlets throughout Australia. The beverages are sold across a variety of outlets ranging from national grocery retailers through to food court environments and office vending machines. The revenue derived from the sale of ‘MOTHER’ branded beverages within Australia has been, by any reasonable measure, significant.

1. The Opponent’s investment in the advertisement and promotion of ‘MOTHER’ branded beverages has also been substantial. The Sacks Declaration canvasses a wide array of print, broadcast and online mediums through which ‘MOTHER’ branded beverages have been promoted. Evidence in the form of various commercials, photographs of external signage and store displays featuring ‘MOTHER’ branded beverages are exhibited in Exhibits RCS-4, RCS-5, RCS-8, RCS-9, RCS-11 to RCS-13 and RCS- 17 to RCS-27 to the Sacks Declaration.

1. Additionally, the Sacks Declaration details competitions and sporting events which have been sponsored by or have otherwise featured the ‘MOTHER’ brand. Exhibits RCS-28 to RCS-33 to the Sacks Declaration contain various media files and photographs of the ‘MOTHER’ brand appearing at live radio events, V8 Supercar races and other motorsport competitions.

3 See Annexure 1.

4 Sacks Declaration, [7].

5 Ibid [10].

Section 92(4)(b)

1. To successfully oppose the removal application, the Opponent must establish that it, or an authorised user, has used the Trade Mark in Australia during the Relevant Period or that there was an obstacle to use during that period.

1. The Sacks Declaration details the use of ‘MOTHER’ branded beverages within Australia. However, it is devoid of any evidence demonstrating use of the Trade Mark (or a trade mark with additions or alterations that do not substantially affect its identity). In this regard, the Opponent’s Submissions concede that the Trade Mark has not been used in Australia in relation to the Registered Goods during the Relevant Period.6

1. I note the Opponent was not the registered owner of the Trade Mark for the entirety of the Relevant Period. However, the Opponent does not contend, nor does the Sacks Declaration provide a basis to conclude, that any obstacle to use of the Trade Mark existed during the Relevant Period.7

1. Accordingly, the ground for removal under s 92(4)(b) of the Act has been established in respect of all the Registered Goods. It follows that consideration of the matter under the s 92(4)(a) ground for removal is not required.

1. I now turn to consider whether it is reasonable to exercise the Registrar’s discretion to retain the Trade Mark on the Register.

Registrar’s discretion

1. Section 101 affords the Registrar a broad discretion not to remove an unused trade mark if the Registrar is satisfied that it is reasonable to do so. This discretion ‘is limited only by the subject matter, scope and purpose of Part 9 of the Act’.8 To this end, the Full Federal Court observed:

   The purpose of Part 9 is to provide for the removal of unused trade marks from the Register. In that regard it is plainly designed to protect the integrity of the Register, and

6 Opponent’s Submissions, [7], [43].

7 The Act s 100(3)(c).

8 Austin, Nichols & Co Inc v Lodestar Anstalt [2012] FCAFC 8, [35].

in this way, the interests of the consumer. At the same time, however, it seeks to accommodate, where reasonable, the interests of the registered trade mark owners. Otherwise, there would be no need for the discretion.9

1. The Opponent bears the onus of satisfying the Registrar that the discretion under s 101(3) ought to be exercised in its favour.10 The following non-exhaustive factors have been found relevant to the consideration of whether to exercise the discretion:

   ·There had been no abandonment of the trade mark;

·The registered owner of the mark still had a residual reputation in the mark;

·There had been sales by the registered owner of goods for which removal was sought since the relevant period ended;

·The applicant for removal had entered the market without having taken steps to ascertain from the Register whether anyone had a right to exclude their use of the mark;

^·The registered owner was not aware of the applicant’s sales under the mark.11

1. The Opponent posits that several circumstances support the Trade Mark registration being retained in relation to a subset of the Registered Goods (‘Restricted Goods’).12 Specifically, reliance was placed on the following:

·The Opponent has not abandoned the Trade Mark and it has a continuing interest in the Trade Mark;

·Through substantial and consistent use in Australia, the Opponent has acquired a reputation in the word ‘MOTHER’ and ‘MOTHER’ derivatives in respect of beverages; and

9 Ibid [38].

10 Optical 88 Ltd v Optical 88 Pty Ltd (No 2) [2010] FCA 1380, [273].

11 Flick J in E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2008] FCA 1005, [202]-[203], summarising Falconer J in Hermes Trade Mark [1982] RPC 425.

12 See Annexure 2.

·The Opponent’s private interests would be adversely affected if the Trade Mark was removed.

1. Conversely, the Applicant asserts that it is not reasonable for the Trade Mark to remain on the Register when regard is had to the following:

·The Trade Mark has never been used and it has no residual reputation;

·The Trade Mark has been abandoned by the Opponent;

·The Opponent’s reputation in ‘MOTHER’ trade marks is limited to a specific style and is exclusively in relation to energy drinks; and

·The Restricted Goods are distinct goods to energy drinks and consumers are unlikely to associate both as deriving from the same trade source.

1. For the reasons that follow, I am not satisfied that it is reasonable to exercise the Registrar’s discretion to retain the Trade Mark on the Register in respect of any of the Registered Goods. To this end, it is convenient to address the relevant factors and circumstances set out at [25] to [27] of this decision.

Abandonment

1. The Sacks Declaration and the Opponent’s Submissions confirm that the Trade Mark has never been used. Given the application was filed on 11 February 2011, more than 8 years have elapsed without any substantive steps being undertaken to use the Trade Mark. This period of non-use is greater than the minimum statutory period of three years non-use. Accordingly, there is some merit in the Applicant’s allegation that the Trade Mark has been abandoned.

1. The Opponent contends it has not abandoned the Trade Mark and reference is made to a new trade mark application it filed on 21 June 2018 (‘New Application’).13 The New Application is for an identical mark to the Trade Mark and is in respect of identical goods to the Registered Goods. The

13 See pending Australian trade mark application number 1935640.

Opponent further submits that its very opposition to the present removal application demonstrates that it has no intention of abandoning the Trade Mark.

1. In my view, filing the New Application and opposing the current removal application does not, without more, sufficiently refute the Applicant’s abandonment allegation. Since 11 February 2011, TCCC and subsequently the Opponent had ample opportunity to commence use of the Trade Mark. Neither has done so. Likewise, when compiling the Sacks Declaration, the Opponent had an opportunity to explain the non-use to date and lead probative evidence affirming its intention to use the Trade Mark. Again, it has not done so.

1. Instead, the Sacks Declaration merely states the Trade Mark is an ‘important ongoing part’ of the Opponent’s business and that removal of same from the Register would severely prejudice its private rights.14 In my view, apart from the loss of priority date associated with the removal of the Trade Mark, any detriment likely to be suffered by the Opponent is not readily apparent.

1. Accordingly, I am not satisfied that the removal of the Trade Mark would have any significant adverse effect on the Opponent’s private rights. This is not a situation where there was use of the Trade Mark prior to or after the Relevant Period. Nor is it one in which the Trade Mark had been used during the Relevant Period albeit by a party that is not an authorised user within the meaning of the Act.15 Rather, in this matter, the Trade Mark has never been used. In this context, the action of filing the New Application is more likely a countermeasure adopted in response to the present removal application as opposed to a bona fide step towards use of the Trade Mark. This is particularly so given the New Application was lodged by the Opponent approximately 4 months after the removal application was filed by the Applicant.

1. The sustained period of non-use therefore weighs against exercising the discretion in favour of the Opponent. 16

Residual reputation & Use of the Trade Mark after the Relevant Period

14 Sacks Declaration, [64].

15 See The Act s 8.

16 Conquip Holdings Pty Ltd v S & A Restaurant Corp [2000] FCA 256, [90].

1. As the Trade Mark has never been used in Australia or abroad, it follows that no residual reputation can exist in the Trade Mark. Naturally, this weighs against exercising the Registrar’s discretion in the Opponent’s favour.

Applicant’s investigations prior to market entry

1. The Applicant did not file evidence in answer and it is unknown what, if any, investigations were undertaken prior to market entry. Given the Trade Mark has never been used, the potential lack of investigation is inconsequential to how the Registrar’s discretion might be exercised in this case.

Opponent’s awareness of the Applicant

1. The written submissions of each party indicate they are engaged in an ongoing dispute regarding a separate Australian trade mark application.17 As such, it is evident that the Opponent was aware of the Applicant in this instance.

Opponent’s reputation in ‘MOTHER’ branded beverages

1. The Opponent asserts that its extensive use of ‘MOTHER’ branded beverages in Australia has conferred upon it a reputation in the word ‘MOTHER’ as well as ‘MOTHER’ derivatives in respect of beverages. The latter being premised on the fact that consumers recognise that ‘MOTHER’ branded beverages incorporate product extension and brand variation. This is allegedly achieved by the Opponent’s adoption of taglines in combination with the word ‘MOTHER’ as the primary element. Examples include: ‘MOTHER 100% NATURAL ENERGY’, ‘A MOTHER OF AN ENERGY HIT’, ‘MOTHER OF A MIXER’ and ‘MOTHER OVER THE TOP ENERGY’.18 On this basis, the Opponent contends that the Trade Mark would be perceived in a similar manner, namely ‘MOTHER’ – ‘LOADED ICE COFFEE’.

1. Consequently, if the Trade Mark is removed, the Opponent asserts that subsequent third party use of a trade mark containing the word ‘MOTHER’ or derivatives thereof in relation to the Restricted Goods would likely lead to deception or confusion. Reference was made to Sensis Pty Ltd v Senses Direct Mail and Fulfillment Pty Ltd19 wherein Davies J observed:

17 See pending Australian trade mark application number 1819816.

18 Opponent’s Submissions, [21].

19 [2019] FCA 719, [130].

A relevant factor is whether the removal of the mark would lead to deception or confusion as a result of fragmented ownership of the same, or a very similar mark in respect of very similar goods or services

At the hearing, Ms Ryan submitted removal of the Trade Mark from the Register would cause a ‘gap’ in the beverage market wherein the Opponent is well known to have a portfolio of ‘MOTHER’ trade marks. That is, if registration of the Trade Mark is not preserved in relation to the Restricted Goods, fragmented ownership of ‘MOTHER’ trade marks would ensue.

1. Several difficulties emerge from the Opponent’s line of deduction. These may be condensed into two main issues – 1) the alleged reputation the Opponent enjoys in the word ‘MOTHER’ or derivatives thereof in respect of beverages and 2) the alleged similarity of the goods provided by the Opponent and the Restricted Goods.

1. In Frucor Beverages Limited v The Coca-Cola Company,20 Yates J observed that ‘[e]nergy drinks are accepted in the beverage industry as a separate and distinct category of non-alcoholic drink’21 and are ‘presented to the public as a stand-alone drinks category’.22 No evidence before me controverts these observations and I consider them equally applicable to the present discussion.

1. The evidence demonstrates that the Opponent’s reputation in Australia for the word ‘MOTHER’ is confined to a specific kind of beverage – namely, energy drinks. The Sacks Declaration establishes that ‘MOTHER’ or derivatives thereof are used in relation to a variety of different flavoured drinks such as ‘frosty berry’,23 ‘green storm’24 and ‘lemon bite’.25 This practice was advanced as illustrating product variation. I do not find this convincing because it merely illustrates flavour variation of the same kind of product – namely, energy drinks. There is no evidence of use in relation to other kinds of beverages, such as dairy, tea or vegetable-based drinks. Nor is there any evidence of use in relation to goods such as chocolate or cocoa. Accordingly, there is no cogent basis to conclude that

20 [2018] FCA 993.

21 Ibid [36].

22 Ibid [48].

23 See Sacks Declaration, Exhibit RCS-21. 24 See Sacks Declaration, Exhibit RCS-24. 25 See Sacks Declaration, Exhibit RCS-18.

the Opponent’s reputation transcends the energy drinks market given the evidence does not show any form of diversification beyond same.

1. The discrete nature of the Opponent’s reputation is further reflected by its trade mark portfolio. Relevantly, of the 18 trade marks disclosed, only the Trade Mark contains claims for goods in classes 29 and 30. Similarly, the Opponent’s advertising consistently emphasises the energy benefits of its drinks. For example, Exhibits RCS-8 and RCS-11 to the Sacks Declaration contain photographs of various posters and case stackers that feature the word ‘MOTHER’ with by-lines such as ‘new taste - double the energy hit’, ‘warning – heaps of energy’ and ‘maximum energy – legal limit’. Likewise, the Opponent’s website domain name is ‘ and social media usernames include ‘MOTHER ENERGY DRINK’ and ‘MOTHER ENERGY’.26 Whilst these examples are by no means determinative, they are illustrative of the Opponent’s reputation being intrinsically linked to energy drinks and, in my view, instructive of how consumers would perceive it.

1. The Opponent submitted that consumers are likely to associate its beverages with the Restricted Goods because they are often sold side-by-side. At the hearing, Ms Ryan noted this proximity is evidenced by the Opponent’s energy drinks being sold near dairy based beverages. Reference was made to the following photographs contained in Exhibit RCS-4 to the Sacks Declaration as demonstrating the Opponent’s concern:

1. The proximity of the goods allegedly accentuates the likelihood for confusion if the Trade Mark is removed from the Register. According to the Opponent, this is because consumers aware of the

26 See Sacks Declaration, Exhibits RCS-24 to RCS-25.

Opponent’s ‘MOTHER’ branded beverages would likely be caused to wonder if confronted with, for example, nearby dairy based beverages branded with ‘MOTHER’ or a derivative thereof.

1. This argument is not persuasive in several respects. The photographs reproduced at [44] are, on a fair reading of the evidence, infrequent. Instead, the evidence primarily demonstrates ‘MOTHER’ branded beverages are sold in self-contained units, single display pallets or placed side-by-side with other energy drinks, soft drinks or fruit-based drinks. Indeed, I am aware from my own knowledge of grocery retailers that energy drinks are generally sold in a different area and separate aisle to dairy- based beverages. This is apposite for both long life and standard dairy-based beverages. It follows that the alleged proximity of the respective goods is not borne out by the evidence.

1. Meanwhile, the Opponent contends that caffeine is specifically promoted on its beverages. An implication of this is that it heightens the likelihood of consumers drawing an association between the Opponent’s beverages and caffeinated beverages which are encompassed by the Restricted Goods. Reference was made to material such as the can label within Exhibits RCS-3 to RCS-4 to the Sacks Declaration that demonstrate the specific promotion of caffeine:

1. On this basis, it was postulated that consumers would draw an association between energy drinks containing caffeine with goods in the nature of, inter alia, coffee beverages. I am not persuaded by this reasoning. Firstly, the placement and depiction of the listed ingredients does no more to promote caffeine than it does to promote acai, guarana or ginseng. Secondly, I do not consider a sufficient nexus exists between energy drinks and coffee beverages, such that consumers can assume a likely connection between the trade source of the goods. Notwithstanding both types of

goods are beverages and generally contain caffeine as a constituent, they are readily distinguishable when consideration is given to their nature, use and trade channels.27

1. Energy drinks are typically carbonated with a high stimulant and/or nutritional supplement content. They are generally served cold and are consumed to provide physical or mental stimulation. On the other hand, coffee beverages encompass both hot and cold brews which may be mixed with dairy or dairy alternatives such as soy or almond milk. They are usually non-carbonated and brewed from roasted coffee beans. While coffee beverages may be consumed for a stimulant effect, confining coffee beverage consumption to this solitary reason would be an oversimplification and not reflective of market realities. For example, there is a connoisseur aspect to the goods with aficionados sampling different flavour profiles of coffee beverages based on the region where the coffee beans are harvested and this is reinforced by the prevalent coffee culture within Australian society. In contrast, caffeine is merely an ingredient added in energy drinks for the sole purpose of producing a stimulant effect. Coffee beverages are targeted to both genders across all adult age groups whereas energy drinks are generally targeted at young male consumers.28 Tellingly, beverage manufacturers do not customarily provide both energy drinks and goods that fall within the scope of the Restricted Goods. To this end, the Applicant stated that neither it or the Opponent provides both types of goods and the evidence submitted does not identify any such party.

1. Accordingly, I am satisfied that consumers are unlikely to draw a connection between energy drinks and coffee beverages based on caffeine being a common ingredient. It is important to reiterate that it is caffeine, not coffee, which is present in the Opponent’s energy drinks. Holistically, the nature, use and trade channels of the actual goods are sufficiently dissimilar. The disconnect between energy drinks and coffee beverages is further reinforced by the fact that decaffeinated variants of both goods exist.

1. Reference was also made to two decisions of the Registrar, namely TWG Tea Company Pte. Ltd v Tsit Wing International Company Limited (‘TWG’)29 and Energy Beverages LLC v M.D Visage Pty Ltd

27 As described by Romer J in Jellinek’s Application 63 RPC 59, expanded upon in Beck, Koller & Company’s Application 64 RPC 76, 78.

28 Sacks Declaration, [8].

29 [2015] ATMO 64 (‘TWG’).

(‘Visage’).30 In each decision, consideration was given to similarity between certain goods in Classes 30 and 32. The Opponent contends these decisions are consistent with its present position regarding the likelihood of confusion resulting from the association between energy drinks and the Restricted Goods. I do not consider either decision assists the Opponent for the following reasons.

1. TWG concerned, inter alia, an opposition to partial removal of a trade mark registered in classes 30 and 32. The removal application was made in respect of class 30 only. The delegate determined that the registered trade mark, in its precise form,31 had not been used during the relevant period. Nevertheless, the Registrar’s discretion was exercised to preserve the registration in full. The delegate observed that variations of the trade mark had been used in relation to some of the relevant goods,32 the trade mark would have remained registered in respect of goods in class 32 irrespective of the removal application and the decision to seek partial instead of full removal of the registration was the applicant’s choice.33 The present circumstances are distinguishable as removal of the Trade Mark from the Register would not entitle the Owner to continued use of the Trade Mark in respect of Class 32 goods and the Trade Mark has never been used nor has there been use of any variation with a ‘very strong, unifying impression’34 to the Trade Mark. Further, in contrast to the applicant in TWG, the Applicant in this matter has sought complete, not partial, removal of the Trade Mark from the Register.

1. Meanwhile, the delegate in Visage determined that a s 44 ground of opposition had been partially established. In considering the similarity of the relevant goods, the delegate observed there was ‘merit in the Opponent’s point of view that its claims for energy drinks including double-caffeine drinks in class 32 are of the same description as the Applicant’s claims in class 30 for beverages containing caffeine’.35 However, this does not constitute authority for energy drinks being automatically considered similar to any class 30 beverage containing caffeine. The claims before the

30 [2018] ATMO 53 (‘Visage’).

31 TWG (n 29) [54].

32 Ibid [55].

33 Ibid [58].

34 Ibid [52].

35 Visage (n 30) [27].

delegate in Visage covered all beverages in Class 3236 and the applicant did not attempt to differentiate the goods. Consequently, the delegate declined to arbitrarily dissect the respective goods and instead articulated the goods that were clearly not similar.37 As such, Visage is not on all fours with the present matter given the Opponent’s reputation resides specifically in energy drinks and not beverages at large.

1. Finally, the Opponent contends that ‘MOTHER’ is a highly distinctive term in the context of beverages and this exacerbates the risk for confusion if the Trade Mark is removed from the Register. While I accept that ‘MOTHER’ is distinctive for beverages, I am not persuaded that the removal of the Trade Mark would increase the potential for confusion. My inspection of the Register reveals several different entities using trade marks that incorporate the word MOTHER (or phonetic variants thereof) in relation to items that fall within the Registered Goods.38 Naturally, the presence of other trade marks containing the word ‘MOTHER’ for similar goods to the Restricted Goods dilutes the Opponent’s alleged monopoly in ‘MOTHER’ and derivatives thereof for beverages. In turn, this diminishes the potential for deception or confusion to occur since consumers are likely to be accustomed to different traders using ‘MOTHER’ with additional word and/or image elements as an indicator of trade source in respect of beverages.

Conclusion

1. Having considered the submissions and evidence before me, I am satisfied that it is not reasonable to exercise the Registrar’s discretion to retain the registration of the Trade Mark for any of the Registered Goods.

1. I recognise that there is a public interest in the integrity of the Register and, in this matter, I do not consider it is served by allowing the unused Trade Mark to remain registered for the Restricted Goods. The evidence confirms that the Trade Mark has remained unused for over 8 years and it does not have any form of residual reputation. No documented intention of future use of the Trade Mark

36 Ibid [24].

37 Ibid [29].

38 See Annexure 3.

or any detailed plans have been disclosed by the Opponent and the mere existence of the New Application does not negate the prolonged period of non-use of the Trade Mark.

1. The fallacy of the Opponent’s position that the Registrar’s discretion ought to be exercised resides in the fact that its reputation in ‘MOTHER’ and derivatives thereof is confined to the energy drinks market. Any level of consumer confusion potentially caused by the removal of the Trade Mark is accordingly low given the dissimilar nature, use and trade channels of energy drinks and the Restricted Goods. Such goods are not customarily associated nor are they commonly provided by the same trader. In my view, the Opponent’s reputation is not sufficiently pervasive to compensate for the disparity which exists between energy drinks and the Restricted Goods. Consumers are unlikely to perceive the Restricted Goods branded with ‘MOTHER’ or derivatives thereof as being exclusively associated with the Opponent’s energy drinks. This is confirmed by the Register which indicates that several different entities are using the word ‘MOTHER’ in relation to the Restricted Goods. I do not consider issues of fragmented ownership arise in this instance and I am satisfied that deception or consumer confusion is unlikely to ensue from the removal of the Trade Mark from the Register.

1. Bearing the above in mind, I am not prepared to exercise the Registrar’s discretion to preserve the Trade Mark on the Register.

Decision

1. The Opponent has failed to establish that the Trade Mark was used during the Relevant Period. The application for removal under s 92(4)(b) of the Act has therefore been successful.

1. I am not satisfied that it is reasonable to exercise the Registrar’s discretion to allow the Trade Mark to remain on the Register. Accordingly, I direct that trade mark registration number 1408011 be removed from the Register one month from the date of this decision. If the Registrar is served with a notice of appeal before then trade mark registration number 1408011 shall not be removed until the appeal has either been discontinued or, in the event of a decision from the Court, that the Applications be dealt with as the Court sees fit.

Costs

1. Both parties have sought costs. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to rebut the allegation of non-use, I award costs against the

Opponent under s 221 of the Act in accordance with the amounts set out in Schedule 8 of the Trade Mark Regulations 1995 (Cth).

Nicholas Barbey Hearing Officer

Oppositions and Hearings Trade Marks and Designs 24 September 2019

Annexure 1

Trade Mark Number	Trade Mark	Class(es)	Priority Date	Owner(s)
1106174	32	28 Mar 2006	Energy Beverages LLC
1131430	32	23 Aug 2006	Energy Beverages LLC
1140535	32	11 Oct 2006	Energy Beverages LLC
1230388	MOTHER	32	17 Mar 2008	Energy Beverages LLC
1240783	MOTHER OF ALL ENERGY KICKS	32	14 May 2008	Energy Beverages LLC
1247244	32	17 Jun 2008	Energy Beverages LLC
1315701	MOTHER OF A MIXER	32	17 Aug 2009	Energy Beverages LLC
1320799	5, 32	14 Sep 2009	Energy Beverages LLC
1345404	MOTHERLAND	32, 33, 41	11 Feb 2010	Energy Beverages LLC
1364858	MOTHER	33	1 Jun 2010	Energy Beverages LLC

1408011	MOTHER LOADED ICED COFFEE	29, 30	8 Feb 2011	Energy Beverages LLC
1447700	MOTHER OF AN ENERGY HIT	32	8 Sep 2011	Energy Beverages LLC
1450088	MOTHER ENDURE	5, 32	21 Sep 2011	Energy Beverages LLC
1473750	MOTHER MAIDENS	32	8 Feb 2012	Energy Beverages LLC
1571391	MOTHER MERCIFUL	32	29 Jul 2013	Energy Beverages LLC
1578423	MOTHER GREEN STORM	32	4 Sep 2013	Energy Beverages LLC
1601749	32	20 Jan 2014	Energy Beverages LLC

Annexure 2

Class No.	Restricted Goods
29	Milk and milk products; flavoured milk beverages; dairy products including milk and yoghurt based products and beverages with or without fruit additives; yoghurt; liquid food supplements and nutritional supplements (other than for medicinal use); natural products in this class incorporating herbal preparations (other than for medicinal use); liquid food supplements with herbs (other than for medicinal use); drinks flavoured with herbs and having a milk base
30	Coffee; tea; cocoa; chocolate; artificial coffee; ice cream; beverages in this class including coffee based beverages, tea based beverages and chocolate based beverages; herbal extracts (other than for medicinal purposes); herbal infusions (other than for medicinal use) and herbal tea (other than for medicinal use)

Annexure 3

Trade Mark Number Trade Mark Class(es) Priority Date Owner(s)

896621	29, 30	29 Nov 2001	Prolife Foods Limited
991737	EARTH MOTHER	30	3 Mar 2004	Prolife Foods Limited
1107426	29, 30	5 Apr 2006	PUNJ INTERNATIONAL PTY LTD as trustee for PUNJ I.P. TRUST
1289504	29, 30, 31	14 Mar 2009	Radhe Wholesale and Retail Pty Ltd
1389840	30	28 Oct 2010	Amanti Pty Ltd as trustee for The Goston Family Trust
1438399	BabelBean - Mother Tongue Coffee	30	27 Jan 2011	Amanti Pty Ltd as trustee for The Goston Family Trust
1547047	30	19 Mar 2013	Prolife Foods Limited