Energy Beverages LLC v Cantarella Bros Pty Ltd

In the case of Energy Beverages LLC v Cantarella Bros Pty Ltd, the applicant, Energy Beverages LLC, sought leave to appeal from judgments of a single judge of the Court regarding trade mark disputes. The disputes involved the applicant's registered trade mark "MOTHERLAND" and the respondent's application to register "MOTHERSKY" for certain goods. The primary judge had dismissed an appeal from the decision of a delegate of the Registrar of Trade Marks in opposition proceedings, and the applicant sought to challenge these decisions.

The key legal issues before the court were whether the primary judge had erred in finding that the applicant had not used "MOTHERLAND" as a trade mark and whether the primary judge had erred in determining that "coffee" and "non-alcoholic beverages" were not similar goods to "energy drinks" or that "MOTHERSKY" was not deceptively similar to "MOTHER". Additionally, the court needed to assess if the use of "MOTHERSKY" in respect of "coffee" would likely deceive or cause confusion due to the reputation of "MOTHER".

The court found no error in the primary judge's conclusion that "MOTHERLAND" was not used as a trade mark in the relevant non-use period. The principles concerning trade mark use were well settled, and the primary judge had correctly applied these principles. However, regarding the similarity of goods and the deceptive similarity of "MOTHERSKY" to "MOTHER", the court found that the primary judge had erred. The court held that "coffee" and "non-alcoholic beverages" were similar goods within the meaning of the Trade Marks Act 1995 (Cth), and that "MOTHERSKY" was deceptively similar to "MOTHER", likely to cause confusion or deception. Consequently, the court granted leave to appeal and allowed the appeal in respect of the grounds concerning similarity of goods and deceptive similarity.

The final orders included granting leave to appeal for the proceeding NSD 145 of 2022, setting aside previous orders, and requiring the parties to file written submissions on the further orders to be made, including costs. The court also directed that the question of further orders, including costs, be determined on the papers.