Energy Beverages LLC v Charlie Coglitore
[2018] ATMO 33
•6 March 2018
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Energy Drinks LLC to registration of trade mark application 1710869 (5, 32) - MADUI Mother Against Driving Under the Influence - in the name of Charlie Coglitore.
| Delegate: | Aaron Walters |
| Representation: | Opponent: Written submissions by Elizabeth Godfrey of Davies Collison Cave Patent and Trade Mark Attorneys Applicant: No Submissions |
| Decision: | 2018 ATMO 33 |
Background
On the 30 July 2015, Mr Charlie Coglitore (‘the Applicant’) filed an application for the following trade mark:
Application number: 1710869
Trade Mark: MADUI Mothers Against Driving Under the Influence
(‘the Trade Mark’)
In respect of the following goods:
Class 5: Beverages adapted for medical purposes; Beverages adapted for medicinal purposes; Beverages containing added minerals (for medical purposes); Beverages containing added trace elements (for medical purposes); Beverages containing added vitamins (for medical purposes); Dietetic beverages adapted for medical purposes; Electrolyte replacement beverages for medical purposes; Herbal beverages for medicinal use; Ice beverages for medical use; Malted milk beverages for medical purposes; Medicated beverages; Medicinal beverages; Tisanes (medicated beverages); Tonic water (medicated beverages); Waters (beverages) for medical purposes; Nausea medications; Alcohol for pharmaceutical purposes; Chemicals for pharmaceutical use; Melissa water for pharmaceutical purposes; Milk of almonds for pharmaceutical purposes; Pain killers (pharmaceuticals); Pharmaceutical drugs; Pharmaceutical medicaments in unit dosage form; Pharmaceutical preparations; Pharmaceutical preparations being hormone preparations for human use; Pharmaceutical preparations containing hormones for humans; Pharmaceutical preparations containing royal jelly; Pharmaceutical preparations containing vitamins; Pharmaceutical preparations for alleviating disorders of the brain; Pharmaceutical preparations for health care; Pharmaceutical preparations for human use; Pharmaceutical preparations for oral use; Pharmaceutical preparations for personal use; Pharmaceutical preparations for the treatment of alcoholism; Pharmaceutical preparations for the treatment of cardiovascular diseases; Pharmaceutical preparations for the treatment of cardiovascular disorders; Pharmaceutical preparations for the treatment of depressive illness; Pharmaceutical preparations for the treatment of disorders of the central nervous system; Pharmaceutical preparations for the treatment of the eyes; Pharmaceutical preparations for use in discouraging the smoking habit; Pharmaceutical preparations for use in the treatment of hormonal disorders; Pharmaceutical preparations in the form of tablets; Pharmaceutical products; Pharmaceutical products derived from natural sources; Pharmaceutical products for combating heart diseases; Pharmaceutical products for the central nervous system; Pharmaceutical products for the treatment of cardiovascular disorders; Pharmaceutical products for use by humans; Psycho-pharmaceutical preparations; Stimulants for pharmaceutical purposes; Syrup of molasses for pharmaceutical purposes; Tablets (pharmaceuticals); Yeast for pharmaceutical purpose
Class 32: Aerated beverages (non-alcoholic); Alcohol free beverages; Beverages consisting of a blend of fruit and vegetable juices; Beverages containing not more than 1.15% (by volume) of alcohol; Beverages made from fruit concentrates; Coconut milk (beverages); Edible essences for making beverages; Electrolyte replacement beverages for general and sports purposes; Essences for making beverages; Extracts of vegetables (beverages); Fruit beverages; Fruit concentrates for making beverages; Fruit juice beverages; Fruit juice beverages that contain multi vitamins; Fruit juice extracts (beverages or for making beverages); Fruit juice nectar (beverages or for making beverages); Fruit syrup (beverages or for making beverages); Grain based non-alcoholic beverages; Hop concentrates for use in the preparation of beverages; Hop essences for use in the preparation of beverages; Hop extracts for use in the preparation of beverages; Isotonic beverages; Low alcohol beverages containing not more than 1.15% (by volume) of alcohol; Malt based preparations for making beverages; Malt-containing beverages (beers); Malt-containing beverages (non-alcoholic, except beers); Mineral water (beverages); Non-alcoholic barley based beverages; Non-alcoholic beverages (except non-alcoholic beer); Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Pastilles for effervescing beverages; Powders for effervescing beverages; Preparations for making beverages; Seltzers (beverages); Sherbets (beverages); Sorbets (beverages); Soya based beverages (not being dairy substitutes); Soya-based beverages, other than milk substitutes; Spring water (beverages), other than for medical purposes; Squashes (non-alcoholic beverages); Syrup for making beverages; Syrup powder for beverages; Syrups for beverages; Tisanes (non-medicated beverages and other than tea based); Tonic water (non-medicated beverages); Tropical fruit squash (beverages); Vegetable extracts (beverages); Vegetable juice concentrates (beverages); Vegetable juices (beverages); Waters (beverages); Whey beverages
(‘the claimed goods’)
The Trade Mark was examined as required under s 31 of the Trade Marks Act 1995 (Cth) (‘the Act’), and was advertised as having been accepted for possible registration in the Australian Official Journal of Trade Marks on 24 December 2015.
On 23 February 2016, Energy Beverages LLC (‘the Opponent’) filed a Notice of Intention to Oppose registration of the Trade Mark. A Statement of Grounds and Particulars (‘SGP’) followed on 23 March 2016 which outlined five grounds of opposition under sections 42(b), 44, 59, 60 and 62A of the Act. The Applicant filed a Notice of Intention to Defend on 19 April 2016. Evidence in support, answer and reply were filed between July 2016 and January 2017.
No request to be heard was made by either party and they were given the opportunity to provide written submissions. The Opponent relies on its written submissions received 8 May 2017. The Applicant did not provide any submissions for me to consider.
Authority to hear the matter
As a delegate of the Registrar of Trade Marks,[1] I provide the following reasons and the decision that follows is made under ss 55(1) of the Act based on the evidence and submissions provided by the parties in this matter.
[1] Pursuant to s 206(2) of the Act.
Evidence
The evidence filed in this opposition consists of the following:
Evidence in Support
Declaration made by Rodney Cyril Sacks, Chief Executive Officer of the Opponent, on 28 July 2016 and featuring exhibits RCS-1 to RCS-34 (‘Sacks 1’).
Declaration made by Elizabeth Kate Godfrey, Principal of Davies Collison Cave Patent and Trade Mark Attorneys, on 27 July 2016 and featuring exhibits EKG-1 to EKG-3 (‘Godfrey’).
Evidence in Answer
Declaration made by Charlie Coglitore on 1 November 2016 (‘Coglitore’). Material containing several certificates of trade mark registrations and a signed document confirming the Applicant is the president of Biomix Network Ltd is attached to Coglitore. The relationship Biomix Network Ltd has to these proceedings is not specified. Coglitore does not otherwise list any exhibits or annexures.
Evidence in Reply
Declaration made by Rodney Cyril Sacks on 26 January 2017 and featuring exhibit RCS-34 (‘Sacks 2’).
The Opponent
As the result of an assignment dated 12 June 2015, Energy Beverages LLC took ownership of a portfolio of registered trade marks, each featuring the word MOTHER. I have reproduced these trade marks further below in paragraph 11 of my decision. Prior to the assignment, the Coca-Cola Company was the registered owner of those trade marks. Any subsequent reference to ‘the Opponent’ is a reference to Energy Beverages LLC or its predecessor in title the Coca-Cola Company.
Grounds of Opposition and Onus
The Opponent relies upon all of the nominated grounds particularised in the SGP, being those under ss 42(b), 44, 59, 60 and 62A of the Act. To succeed in an opposition, the Opponent need only establish one of the nominated grounds in relation to all the claimed goods.[2]
[2] Section 55(1) of the Act.
The onus of proof rests with the Opponent[3] with the relevant standard of proof being on the balance of probabilities.[4] The rights of the parties are to be determined as at the date of filing of the Trade Mark, being 30 July 2015 (‘the relevant date’).[5]
Discussion
[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 [32]
[4] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26]; Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [132].
[5] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592, 595.
Section 44
Section 44 of the Act relevantly provides:
Identical etc. trade marks
(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:
(a) the applicant's trade mark is substantially identical with, or deceptively similar to:
(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and
(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.
Note 1: For deceptively similar see section 10.
Note 2: For similar goods see subsection 14(1).
Note 3: For priority date see section 12.
Note 4: The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
The Opponent, in order to establish the above ground of opposition, must point to an earlier existing trade mark application or registration which is either substantially identical with or deceptively similar to the Trade Mark, and is for similar goods and/or closely related services. To this end, the Opponent has relied upon an array of trade marks which I have tabled below:
| Trade Mark No. | Trade Mark Representation | Goods/Services Claimed | Priority Date |
| 1106174 | Various beverages in Class 32 | 28-03-2006 | |
| 1131430 | Various beverages in Class 32 | 23-08-2006 | |
| 1140535 | Various beverages in Class 32 | 11-10-2006 | |
| 1230388 | MOTHER | Various beverages in Class 32 | 17-08-2008 |
| 1240783 | MOTHER OF ALL ENERGY KICKS | Various beverages in Class 32 | 14-05-2008 |
| 1247244 | Various beverages in Class 32 | 17-06-2008 | |
| 1315701 | MOTHER OF A MIXER | Various beverages in Class 32 | 17-08-2009 |
| 1320799 | Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.* | Various preparations, supplements and beverages in Class 5 & 32 | 14-09-2009 |
| 1345404 | MOTHERLAND | Various beverages in Class 32, 33 and services in Class 41 | 11-02-2010 |
| 1364858 | MOTHER Endorsements: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.* | Various beverages in Class 33. | 01-06-2010 |
| 1408011 | MOTHER LOADED ICED COFFEE | Various food and beverages in Class 29 & 30 | 08-02-2011 |
| 1447700 | MOTHER OF AN ENERGY HIT | Various beverages in Class 32 | 08-09-2011 |
| 1450088 | MOTHER ENDURE | Various preparations, supplements and beverages in Class 5 & 32 | 21-09-2011 |
| 1473750 | MOTHER MAIDENS | Various beverages in Class 32 | 08-02-2012 |
| 1571391 | MOTHER MERCIFUL | Various beverages in Class 32 | 29-07-2013 |
| 1578423 | MOTHER GREEN STORM | Various beverages in Class 32 | 04-09-2013 |
| 1601749 | Various beverages in Class 32 | 20-01-2014 |
For ease, I shall refer to the above trade marks collectively as ‘the Opponent’s trade marks’. Where necessary, I shall refer to separate trade marks by their registration number.
The Opponent’s trade marks each have a priority date earlier than that of the Trade Mark.
Pertaining to the similarity of the goods,[6] the Opponent submits:
Each of the Prior Marks is registered in respect of a range of “non-alcoholic beverages” in Class 32 or “pharmaceutical preparations”, liquid vitamin preparations and supplements”, “liquid nutritional and vitamin supplements”, and/or “medicated and dietary beverages” in Class 5.
There can be no question that the goods specified in the Opposed Mark are the same as, or of the same description as, the goods covered by the registration of the Prior Marks. This is the case having regard to their nature, uses, and the trade channels through which they are bought and sold are also the same goods or goods of the same description: see the principles discussed in E & J Gallo Winery v Lion Nathan Australia (2008) 77 IPR 69 at [67] – [69].
[6] See s 14 of the Act.
I consider a similarity exists at least between the designated goods in class 32 and those goods in class 32 of the specifications of the Opponent’s trade marks. No further elaboration on this point is necessary at this stage, because, as was explained by French J in Registrar of Trade Marks v Woolworths,:
In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.[7] [My emphasis added]
[7] [1999] FCA 1020 [39]-[40]; See also Qantas Airways Limited v Edwards [2016] FCA 729, [119 – 120], and applied in Specsavers B.V. v North West Optical Pty Ltd [2017] ATMO 56, [11].
A consideration of whether the marks are substantially identical or deceptively similar to the Trade Mark has a direct bearing on the likelihood of deception or confusion. Bearing in mind the well-established test for comparing marks of a substantially identical nature,[8] I think it evident that none of the Opponent’s trade marks have, on a side by side comparison, a total impression of resemblance to the Trade Mark. On this point, I agree with the Opponent’s representatives that “the only question to answer here is whether the marks are deceptively similar.”[9]
[8] See Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66; (1961) 109 CLR 407 at (414-415).
[9] Submissions made on behalf of the Opponent, paragraph 64.
For guidance on deceptive similarity, s 10 of the Act provides:
10 Definition of deceptively similar
For the purposes of the Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.
The likelihood of deception or confusion existing between the trade marks must be real and tangible.[10] In Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd Windeyer J provided:
On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.
Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant’s trade mark.[11]
[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020.
[11] Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd [1963] HCA 66 [13].
The impression between the marks involves any visual and aural similarities as well as the idea of each mark,[12] with each mark being considered in its entirety.[13] Relevantly, the decision in Clark v Sharp provides:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[14]
[12] Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd [2009] FCA 606; (2009) 81 IPR 354 at [95] summarising the principles discussed in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd [2004] FCAFC 196.
[13] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58 at [92]
[14] (1898) 15 RPC 141 at 146
I find that none of the Opponent’s trade marks bears sufficient resemblance to the Trade Mark, either aurally or visually, to be considered deceptively similar on that basis. However, this on its own would not completely preclude a finding that the trade marks are deceptively similar.[15]
[15] McDonald's Corporation v Macri Fruit Distributors Pty Ltd [2000] ATMO 37
In their submissions, the representatives for the Opponent place heavy emphasis on the presence of the word ‘MOTHER’ describing it as an essential distinguishing element shared by both the Trade Mark and the Opponent’s trade marks. The Opponent’s representatives argue that this fact, coupled with the Opponent’s family of trade marks featuring the word ‘MOTHER’, is likely to result in deception or confusion arising in the mind of the consumer, subsequently rendering the Trade Mark deceptively similar.
The Opponent’s submissions on this point are as follows:
It is well established that where there is a family of trade marks united by a common and distinctive element, there will usually be an expectation that any mark which incorporates that element will form part of the same family, so as to give consumers “cause to wonder” whether the two marks that share that element come from the same source: see, eg, McDonald’s Corporation v Macri Fruit Distributors Pty Limited [2000] ATMO 37.
In McDonald’s v Macri Fruit the marks under opposition were McSALAD and McFRESH. The Delegate held:
The type of confusion outlined here is founded on a perception that, within the context of the circumstances of the market-place, the applicant's marks are seen as being an extension of the opponent's registered trade marks due to a common element in the marks that leads to a conclusion that they identify the same trader. In the present circumstances the opponent has a family of 78 registered trade marks containing a word which has a prefix of Mc-. Of these 78 registered marks, 17 also have another common element. The second common element is that they consist of, or contain, words in which the prefix Mc- has been conjoined with a word which is either the name of the goods or services being sold, or a description of a quality or characteristic of the goods. [My emphasis added]
After listing the 17 relevant marks, the Delegate went on to observe:
Taken together, I believe that the family of 17 marks above, with one important proviso, supplies a sufficient expectation that any trade mark prefixed by Mc- which is conjoined to a word, which describes either the goods or services themselves or a quality or characteristic of the goods, would form part of the opponent's family of marks.
The important proviso here is that the goods or services referred to, in the part word conjoined to the prefix Mc- in the trade mark, would also need to be seen to form a normal or usual part of the opponent's business. Any food, or quality or characteristic of that food, which would be expected to form part of the opponent's fast food operation would, therefore, qualify. In the present circumstances, McSALAD and McFRESH both meet these requirements. The opponent does use 'salad' ingredients and the word 'fresh' describes a laudatory characteristic or quality that would also be expected to be in use in relation to the opponent's goods. Forming an extremely close parallel to the present applications I note that, among others, the opponent has registrations for McVEGETABLE and McVALUE. Several other registrations of the opponent could also be used to demonstrate this parallel. Thus, I find that these two trade marks, McSALAD and McFRESH, are deceptively similar, in a contextual sense, to each of the 17 trade marks listed above, owned by the opponent.[16]
[16] Ibid.
It is important to highlight the Delegate’s reasoning for finding those trade marks deceptively similar lay not in the mere presence of the ‘Mc’ prefix in the opposed marks, but through its use ‘in a contextual sense’, being the particular conjoining of ‘Mc’ to a word which describes goods “forming a normal part of the opponent’s business.” Such a conclusion requires consideration not just of key words or elements, but how these elements are used and their impact on the general impressions left by the respective marks.
Therefore, while I accept the Opponent’s trade marks are united by the common and distinctive element MOTHER, a finding of deceptive similarity requires more than the mere presence of this element in the Trade Mark. In the current matter, I do not consider the existence of the Opponent’s ‘family of trade marks’ lends any significant weight to a finding of deceptive similarity.
Further, the Delegate in Chris Kingsley v David Scott provides:
The general precedent indicates that if one trade mark is contained within another trade mark that fact may not necessarily lead to a finding of deceptive similarity. This is especially so if the presence of that common word (or device) is diminished by other elements in the trade mark or if the common element is descriptive of the claimed goods/services. If the idea or meaning of the trade mark as a whole has been sufficiently altered by the differing trade mark elements, the likelihood of confusion between the two trade marks is thereby reduced. Whether the respective goods and services of the parties are specialised or commonplace is also relevant in determining if confusion is likely to result. In the end, each trade mark must be considered on its own factual circumstances.[17]
[17] [2011] ATMO 20, [13].
Bearing this in mind I turn to the Trade Mark. The five letter acronym MADUI (‘the acronym element’) is followed by the plain words Mothers Against Driving Under the Influence (‘the slogan element’). The Opponent’s representatives contend ‘Mothers’, in this format, remains a prominent and distinct element retaining its distinct sound, appearance and meaning.
I do not agree this is the case. Each trade mark must be considered in its entirety. The Trade Mark is comprised of two main elements, these being the acronym element and the slogan element, the latter of which is clearly the expanded version of the former. Consequently, the impression and meaning of the two elements are necessarily interlinked.
The meaning inherent in the Trade Mark is clear and that meaning clearly differs from all of the Opponent’s Trade Marks. The Trade Mark impresses upon the mind a group or congregate of mothers who are opposed to motorists driving while under the effects of an impairing substance. I further consider the acronym element, placed as it is at the forefront of the mark and being an uncharacteristically long acronym, to be highly distinctive and helps reinforce in the mind the sequencing of the slogan element as a whole. The Opponent’s Trade Marks, on the other hand, have an entirely different meaning and for there to be any deception or confusion to arise, a consumer must, in my mind, engage in an unlikely (and impermissible) shedding of the additional visual and aural features present in the Trade Mark.
Given the distinct differences in meaning and impression between the trade marks, I find it extremely unlikely a consumer would have cause to wonder whether the Trade Mark might be an extension of the Opponent’s family of trade marks.[18]
[18] See also Qantas Airways Limited v Edwards [2016] FCA 729
I find that the Trade Mark is not deceptively similar to any of the Opponent’s trade marks and the ground of opposition under section 44 of the Act has not been established.
Section 60
Section 60 of the Act provides:
60 Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
To establish a ground of Opposition under s 60 of the Act the Opponent must demonstrate a reputation in another trade mark within Australia existed as at the relevant date (30 July 2015). The Opponent must then show, as a result of the aforesaid reputation, that the use of the Trade Mark would be likely to deceive or cause confusion.
Sacks 1 contains the majority of evidence pertaining to the reputation in the Opponent’s trade marks. Relevantly, Mr. Sacks states:
Given the substantial sales of drinks bearing the MOTHER trade mark and the extensive advertising and marketing campaigns to promote the MOTHER branded beverage, I believe that well before the [relevant date], consumers of drinks in Australia were well aware of beverages sold by reference to the MOTHER Trade Mark. Sales figures achieved over the life of the drink, and the reach of our advertising campaigns support a conclusion that the MOTHER Trade Mark was well known to consumers in Australia well prior to the [relevant date].[19]
[19] Sacks 1, paragraph 51.
Prior to the re-launch of its brand in 2008 (‘the re-launch’),[20] the branding seen on the Opponent’s beverages and promotional material was as follows:
(‘the prior branding’)
[20] Sacks 1, paragraph 16.
Following the re-launch, the Opponent’s beverages and much of the promotional material featured the following updated brand:
or
(‘the current branding’)
The prior branding is the subject of trade mark registration 1131430 while the current branding prominently features registered trade mark 1247244 being the stylized representation of the word ‘Mother’ (‘the Mother Mark’) and, less prominently, registered trade mark 1240783 or 1447700. Where it appears the Opponent relies on several similar trade marks to establish reputation in a single common element, it is necessary to consider each of the trade marks as being separate for the purposes of applying s 60 of the Act.[21]
[21] Ibid, [160].
In the present matter, I think it sufficient to focus my discussion on the Mother Mark as I am of the opinion the Opponent’s reputation exists primarily in this mark.
It is apparent from the evidence that the Opponent dedicated considerable effort and resources into the re-launch of its brand in 2008, including reformulating the taste and re-working the overall design and get-up of the Mother beverage.[22] Since that time the prior branding has fallen into dis-use. While I consider the Opponent might retain a residual reputation in the prior branding, nothing in the evidence suggests to me it has continued to promote it after 2008. Therefore, I am less convinced of significant consumer recognition in the prior branding.
[22] Sacks 1, paragraph [15]-[18] and Exhibits RCS-7 to RCS-9.
With regards to the current branding, any evidence post the re-launch shows the Mother Mark present either on its own or in close proximity to other branding incorporating the Opponent’s trade marks. Consequently, should the Opponent be unable to succeed on its s 60 ground based on the Mother Mark, I consider it must also necessarily fail based on any of its other trade marks.
The Opponent must establish the reputation in their trade mark as a matter of fact.[23] Section 60 further refers to a ‘reputation in Australia’. The requisite level of reputation must be amongst a significant or substantial number of the relevant Australian consumers. As per Heerey J who, in Le Cordon Bleu BV v Cordon Bleu International Ltee, provided:
What is "significant" or "substantial" will depend on the nature of the goods or services in question. For highly specialised products, awareness among a few thousand persons, or even less, might be sufficient … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[24]
[23] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 23 IPR 193, (77)
[24] (2000) 50 IPR 1. [91].
There are numerous ways in which reputation in a trade mark can be established, including through television, radio or print advertising.[25]
[25] ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; 23 IPR 193, (118)
A determination of significant or substantial reputation is one which will have regard to the industry in which the parties operate, along with the contemporary measures in which persons, within that industry, seek to establish, develop or extend their reputation in the goods or services they provide.[26]
[26] See the Court’s discussion in Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83, at [81].
In McCormick & Company Inc v McCormick (‘McCormick’), Kenny J stated:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.[27]
[27] [2000] FCA 1335, [86].
The Opponent’s evidence in support of its promotional and marketing activities under the Mother Mark is extensive. Representatives for the Opponent have summarized this evidence in their submissions[28] and the Applicant has not commented on or raised concerns with the Opponent’s evidence. After reviewing the evidence, I consider the following facts are pertinent:
a)In 2007 the Opponent launched its product, primarily being cans of energy drink, and has enjoyed substantial sales under ‘MOTHER’ branded products, in particular the Mother Mark, since the re-launch in 2008.[29]
b)The Opponent had access to an extensive distribution network throughout Australia in which it immediately began distributing goods under the prior branding, before distributing goods under the current branding in 2008.[30]
c)Since 2007, the Opponent has invested substantially in the promotion of ‘MOTHER’ branded products,[31] with a substantial range of marketing and advertising activities featuring the Mother Mark used since 2008. The channels used to advertise are broad and include television and cinema commercials, radio and magazine advertising as well as in-game video game advertising and a substantial online and social media presence.[32]
[28] Opponent submissions, paragraph [22]-[40].
[29] Sacks 1, paragraph 30 and Confidential Exhibit RCS-14.
[30] Sacks 1, paragraph 31-33 and Exhibit RCS-2 & RCS-15.
[31] Sacks 1, paragraph [34]-[35] and Confidential Exhibit RCS-16.
[32] Sacks 1, paragraphs [34]-[36] and Exhibits RCS-17 to RCS-27.
Based on what has been put before me, I agree a significant portion of the Australian consumer base for energy drinks would recognize the Mother Mark.
In submissions the Opponent articulates:
Further, having regard to the way in which the Opponent has used and promoted the Mother trade mark in Australia, it is clear that a significant part of the reputation of the MOTHER brand involves a recognition by those familiar with the brand that the Opponent engages in a substantial amount of product variation, innovation and cross promotion, which is usually carried out under the a name incorporating some variation of the MOTHER trade mark.[33]
[33] Opponent submissions, paragraph [38].
The Opponent provides numerous examples of advertising and promotional events, many of which depict comical challenges[34] and competitions[35] as well as feats of energetic ingenuity as a result of consuming the Opponent’s Mother beverages.[36] The Opponent, under the Mother Mark, has further sponsored celebrity social events[37] and sporting events.[38]
[34] Sacks 1, paragraph [48] and Exhibit RCS-25 and RCS-31.
[35] Exhibit RCS-20.
[36] Exhibit RCS-17.
[37] Sacks 1, paragraph [47] and Exhibit RCS-30.
[38] Sacks 1, paragraph 46.
In particular, the Opponent highlights its sponsorship and cross-promotion into events centering on motorsport. Of note, from 2010 to 2012 the Mother Mark featured heavily during the Opponents’ sponsorship of the V8 Supercar racing events held in Australia.
Exhibits RCS-28 and RCS-29 provide numerous examples of the Mother Mark being used during the course of the Opponent’s sponsorship. The Mother Mark appeared emblazoned on V8 supercars, as well as the uniforms of racing personnel. The Mother Mark was further seen on clothing worn by the Opponent’s promotional team and clearly displayed on signage at these events.
Associated with these events, the Opponent updated its promotional material and packaging to incorporate V8 or motor-vehicle themed imagery. This included the ‘Mother 8 Cylinder Energy System’ and ‘Mother Fuel Cap Bottle’ promotion. Examples of this, from Exhibit RCS-28, have been reproduced below:
Overall, I am satisfied the Opponent has demonstrated a substantial reputation in the Mother Mark for energy beverages. I also consider an enhancing factor to the reputation in the Mother Mark came via its visibility at and sponsorship of these sporting events.
As the Opponent has established a reputation in the Mother Mark, I turn to the likelihood of deception or confusion arising as a result. This involves consideration of the demonstrated reputation in the Mother Mark against the notional use of the Trade Mark.
Likelihood of Deception or Confusion
Although not predicated on deceptive similarity, there must still be a degree of similarity between the Opponent’s reputed mark and the Trade Mark. As the Court in Qantas Airways Limited v Edwards (‘Qantas’) noted:
It is to be noted that, unlike the s 44(1) objection, the objection under s 60 of the Act is not based on the requirement that the allegedly conflicting marks are substantially identical or deceptively similar. The question is purely one of prior reputation. Thus, even if the allegedly conflicting marks are, say, deceptively similar (a contention I have rejected in relation to the 1984 kangaroo/tail fin mark and the opposed mark), the s 60 objection will not be established if the reputation of the “other” trade mark is such that use of the opposed mark is, nonetheless, not likely to result in a real risk of confusion, in the trade mark sense: for an illustration, see Cantarella Bros Pty Ltd v Muller and Kennedy [2007] ATMO 62; (2007) 74 IPR 409; [2007] ATMO 62. That said, I accept that, for the purposes of s 60 of the Act, the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.[39] [My emphasis added]
[39] [2016] FCA 729, [142].
Determining the likelihood of deception or confusion arising is therefore informed by a number of factors including the strength of the reputation in the Mother Mark, the similarity between the marks as well as the similarity between the goods of the parties.[40]
[40] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40].
The Opponent submits the word ‘MOTHER’ is the distinguishing feature which has been incorporated by the Trade Mark. The Opponent’s representatives argue this commonality is likely to deceive or confuse consumers when considered in light of the Opponent’s family of trade marks, the extensive reputation in the Mother Mark and its practice of brand extension and promotion into the motorsport industry.
When considering the similarity between the marks the Opponent’s representatives, in particular, contend the word ‘Mothers’ retains its identity as an essential feature and evokes its central idea. By way of illustration, I am provided the following mark as an example of the way in which the Applicant may feature ‘Mothers’ as the dominant element on the goods:[41]
Mothers
Against
Driving
Under the
Influence
(‘the example mark’)
[41] Opponent Submission, paragraph 42.
In light of the Applicant seeking registration for an unstylized trade mark, it is further submitted the similarity must be considered in the context of the notional use of the Trade Mark which could see it presented in similar style, font and colour scheme (‘the get-up’) as that of the Mother Mark.
In my view, I do not see a similarity between the marks such that there is a high likelihood of deception or confusion arising. I refer to my discussion under Section 44 where I highlight the dissimilarity between the marks and the extent to which the Opponent’s family of trade marks has a bearing.
It is important to bear in mind what the Applicant can do once their trade mark registration is obtained.[42] Such mindfulness can extend to a consideration of the notional use of the Trade Mark. Though, in so saying, I would note the comments of Yates J in Qantas where his Honour held at [178]:
Finally, I do not think that the appellant’s reliance on the use of augmented logos materially assists its opposition under s 60 of the Act. I have already referred to the fact that this really raises a false comparison. The use to which s 60 of the Act refers is a notional use of the opposed mark in light of the reputation that has been established in another mark at the priority date. It is the opposed mark to which attention must be directed, not variations of, or elaborations on, a mark for which registration is not sought.
[42] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
I consider the example mark is the type of augmented logo which leads to a false comparison referred to by Yates J.
To reiterate, in Monster Energy Company v Nathan Darma (‘Monster Energy’), the Delegate noted:
However there is no evidence before me suggesting the Applicant’s intention is to mimic the manner in which the [the Opponent’s mark] is rendered and judicial commentary in this regard indicates I must assume use of an opposed mark in a “fair and reasonable manner” (Smith Hayden & Co Ltd’s Application (1946) 63 RPC 97 at 101) and “by reference to the use to which [the Applicant] can properly put [his] trade mark” (Berlei Hestia Industries Ltd v Bali Co Inc [1973] HCA 43; (1973) 129 CLR 353 at 362) rather than assume the likelihood of use apparently based on bad faith.[43] [Citations included]
[43] [2017] ATMO 4, [50].
Like in Monster Energy, I see no evidence to suggest the Applicant intends to mimic the manner in which the Mother Mark is rendered. Furthermore, I have no evidence before me that the Opponent has used acronyms as part of its branding or in any of its trade marks. Thus, taking into account the Trade Mark as it is sought to be registered, as well as the Applicant’s own statements to the Trade Mark forming part of the ‘theme they are creating’,[44] I am not of the view that use in a fair and reasonable manner would include the manner of use suggested by the Opponent’s representatives.
[44] Coglitore, paragraph [3]-[4]. Here, Mr. Coglitore refers to its other existing registrations which includes, for example, MADD Mothers Against Drug Driving.
In submissions, the Opponent’s own custom for adding words or slogans to the Mother Mark is put forward as a contributing factor to the likelihood of deception or confusion arising with the Trade Mark. This is due to:
…[T]he fact that the words in question here – AGAINST DRIVING UNDER THE INFLUENCE – would be consistent with the involvement of the MOTHER brand in motorsport racing where driving under the influence would be discouraged. It is highly conceivable that consumers will believe that the Opponent is involved in a cross-promotion and/or campaign of MOTHER (the brand) against driving under the influence.[45]
[45] Opponent Submissions, paragraph 50.
I am not inclined to view, without suitable evidence showing a nexus of the kind, that as an obvious result of the Opponent’s involvement and promotion in motorsport racing, the Trade Mark would be viewed as a ‘highly conceivable’ cross-promotion or brand extension of the Mother Mark.
As it stands, the Opponent has not led any evidence of the Mother Mark being used in relation to, or anything akin to, prevention campaigns for driving under the influence. Outside of submitting driving under the influence during motor sport events is discouraged, the Opponent has led no evidence to show such a campaign is linked to or is an obvious ancillary arm of the sport of motor racing.
As it stands, although I have found that the reputation in the Mother Mark is substantial, I am unconvinced the promotional and sponsorship activities evidenced by the Opponent would be likely to result in consumers being caused to wonder whether there is an association between the Trade Mark and the Mother Mark.
Moreover, in Delfi Chocolate Manufacturing S.A. v Mars Australia Pty Ltd (‘Delfi Chocolate’), Jessup J, in finding the reputation of the well-known trade mark for chocolate confectionary ‘Maltesers’, said of that reputation:
I do not consider, however, that that circumstance would make it any more likely that the notional consumer of confectionery would have cause to wonder whether products displayed and sold under the applicant’s mark were from a common source with those displayed and sold under the respondent’s mark. Indeed, with a stronger awareness of the respondent’s mark, I consider that such a consumer would be immediately struck by the differences between the two marks, as discussed above. He or she may observe the limited similarities between the marks and, because the subject of the presumptive interest would be confectionery, may assume that the products were of the same nature as those sold under the respondent’s mark, but, giving the matter a moment’s reflection, would readily conclude that those products were not Maltesers. As I say, the strong reputation of the respondent’s mark would, if anything, make that conclusion a more likely one.[46]
[46] [2015] FCA 1065, [29].
As a result of the Opponent’s extensive and widespread promotion, I consider the Mother Mark is one which is ‘embedded in the consciousness’[47] of consumers of energy beverages. In the unlikely event that the relevant consumer failed to notice the lack of similarity between the Mother Mark and the Trade Mark, they would nevertheless readily conclude the Applicant’s products were not those of the Opponent.
[47] Ibid, [28].
It follows that I am not satisfied that use of the Trade Mark would be likely to deceive or cause confusion amongst a significant portion of the relevant consumers. Accordingly, the Opponent has not established a ground of opposition under s 60 of the Act.
Section 42(b)
Section 42(b) of the Act provides:
Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b) its use would be contrary to law.
The Opponent, in the SGP particularizes the ground as follows:
The Opponent's MOTHER trade marks are well known in Australia for energy drinks and related goods, including a range of beverages and nutritional supplements.
…
Based on the reputation in MOTHER trade marks in Australia in relation to energy drinks, beverages and nutritional supplements and related goods, consumers are likely to be misled or deceived into believing that the goods offered and provided under the "MADUI MOTHERS AGAINST DRIVING UNDER THE INFLUENCE" mark are those of the Opponent or somehow associated or affiliated with the Opponent in breach of section 18 of the Australian Consumer Law 2010 (Cth). Offering and providing the goods specified in classes 5 and 32 of the opposed mark under the "MADUI MOTHERS AGAINST DRIVING UNDER THE INFLUENCE" mark also suggests that the trade mark Applicant and its goods are associated or affiliated with the Opponent or that the Applicant has obtained the Opponent's sponsorship or approval to use the "MADUI MOTHERS AGAINST DRIVING UNDER THE INFLUENCE" trade mark, when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).
The Opponent bears the burden of showing the use of the Trade Mark would be contrary to law.[48] In submissions, the Opponent’s representatives provide:[49]
In this case, the Opponent submits that the conduct of the Applicant in providing the goods claimed in the Opposed Mark under the Opposed Mark would:
(a) constitute misleading or deceptive conduct, contrary to s 18 of the Australian Consumer Law;
(b) give rise to a false or misleading representation that the Applicant or its goods and services have a sponsorship, approval or affiliation that they do not have, contrary to ss 29(1)(g) and (h) of the Australian Consumer Law; and
(c) amount to passing off of the Applicant’s goods and services.
[48] Advantage-Rent-A-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683, [15].
[49] Opponent Submissions, paragraph [106].
I note the Opponent did not particularize the common law tort of passing off as part of its section 42(b) in the SGP. Nor does it appear the Opponent has, at any point, sought to amend its SGP accordingly. Consequently, I will confine my discussion under section 42(b) to the relevant provisions of the Australian Consumer Law 2010 (‘the ACL’),
Turning to s 18 and s 29(1)(g) and (h) of the ACL I have reproduced these sections below:
Section 18: Misleading or deceptive conduct
(1) A person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.
Section 29: False or misleading representations about goods or services
(1) A person must not, in trade or commerce, in connection with the supply or possible supply of goods or services or in connection with the promotion by any means of the supply or use of goods or services:
...
(g) make a false or misleading representation that goods or services have sponsorship, approval, performance characteristics, accessories, uses or benefits; or
(h) make a false or misleading representation that the person making the representation has a sponsorship, approval or affiliation.
(‘the ACL provisions’)
The ACL provisions mimic the terms expressed in s 52 and ss 53(c) and (d) of the now repealed Trade Practices Act 1974 (Cth), meaning the consideration and principles pertaining to the repealed sections remain relevant to the interpretation of the ACL.
Section 42(b) of the Act specifies the use of the Trade Mark would be contrary to law. Therefore, it is not enough for the Opponent to show the ACL provisions could be contravened, rather, that they would be contravened by use of the Trade Mark on the balance of probabilities.[50]
[50] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [411]
In pursuit of this ground, the Opponent relies upon the reputation (detailed earlier in this decision) in the trade mark ‘MOTHER’. In particular, the submissions contend that due to the repute and extensive manner in which the Opponent has used the word ‘MOTHER’ and the nature in which the Applicant incorporates ‘Mothers’ in the Trade Mark, it is likely the offering of goods by the Applicant under the Trade Mark would give rise to a representation the goods are provided by or are associated with the Opponent.
The Opponent’s representatives follow on to submit that such a representation also satisfies the requirements for misleading or deceptive conduct as they go “beyond mere confusion or causing consumers to wonder whether the Applicant’s goods are provided by or with the license or permission by the Opponent.”[51]
[51] Opponent Submissions, paragraph 108.
The Opponent’s submissions here appear to be analogous with its claims under the unsuccessful s 60 ground of opposition. I note as well the test under s 18 of the ACL is a more stringent one than that for deception or confusion under s 60.[52] In so saying, I am not convinced the Opponent has established a sufficient nexus between the impugned conduct and the customer’s misconception or deception.[53]
[52] Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd [1982] HCA 44; (1982) 149 CLR 191, 198.
[53] Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, [260].
When determining whether the Applicant’s conduct amounts to misleading or deceptive the conduct must be viewed as a whole. The words of Gibbs C.J. in Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (‘Parkdale and Puxu’) relate directly to the present matter:
The conduct of a defendant must be viewed as a whole. It would be wrong to select some words or act, which, alone, would be likely to mislead if those words or acts, when viewed in their context, were not capable of misleading. It is obvious that where the conduct complained of consists of words it would not be right to select some words only and to ignore others which provided the context which gave meaning to the particular words.[54]
[54] [1982] HCA 44; (1982) 149 CLR 191, 200
Here, it is the presence of the word ‘Mothers’ in the Trade Mark, as proposed to be used on the Applicant’s goods, which is the crux of the conduct alleged by the Opponent to be deceptive or misleading. However to accept such, I believe, would be to do as his Honour in Parkdale and Puxu warns against and select a single word, while ignoring others, and scrutinize it outside the context in which its meaning is given.
Although in different contexts under the Act, I have determined the unlikelihood of relevant consumers isolating the word ‘Mothers’ within the Trade Mark and, in so doing, be misled into wondering whether this is indicative of the Opponent’s brand.
Indeed, to satisfy the question, there must be a real and not remote chance or possibility that the alleged conduct is misleading or deceptive.[55] Further, as it was said in SAP Australia Pty Ltd v Sapient Australia Pty Ltd:
The characterisation of conduct as “misleading or deceptive or likely to mislead or deceive” involves a judgment of a notional cause and effect relationship between the conduct and the putative consumer’s state of mind. Implicit in that judgment is a selection process which can reject some causal connections, which, although theoretically open, are too tenuous or impose responsibility otherwise than in accordance with the policy of the legislation.[56]
[55] Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, [260].
[56] (1999) 169 ALR 1, [51] per French, Heerey and Lindgren JJ.
In seeing the Trade Mark on the Applicant’s goods, I consider a consumer would likely engage the above noted ‘selection process’ and would not be misled or deceived into believing these were goods provided by or in some way associated with the Opponent.
On this basis, I do not consider the Opponent has made a substantive case for establishing a ground of opposition under s 42(b) of the Act. Accordingly, the ground has not been established.
Section 59
Section 59 of the Act provides:
Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the applicant does not intend:
(a) to use, or authorise the use of, the trade mark in Australia; or
(b) 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 specified in the application.
Note: For applicant see section 6.
Relevant to the section 59 ground, the filing of an application for registration of a trade mark is prima facie evidence of an intention to use that mark.[57] Though this intention arising from filing may be rebutted by the Opponent’s evidence to the contrary.[58] Should the Opponent present a prima facie case that there was a lack of intention to use the Trade Mark, the onus then shifts to the Applicant to establish their intention.[59]
[57] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [72].
[58] Estex Clothing Manufacturers Pty Ltd v Ellis and Goldstein Ltd [1966] HCA 81
[59] Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100, [163].
For the purposes of s 59 of the Act, the Applicant’s lack of use, by itself, does not establish a lack of intention to use. On this point, the Opponent’s submission as to the Applicant’s lack of intention to use the Trade Mark relies primarily on an interpretation of statements made in Coglitore. Relevantly, Coglitore provides:
1. …We are in the development phase of manufacturing non alcoholic drinks and drugs (medications) for Australia, we are currently in formal application process with the therapeutic goods australia (sic) TGA for approval of our product called
RECEPTOL.
2. We are also in communication with a non alcoholic drink manufacturer in USA, product is named RUNA, the company manufacture of RUNA is currently not ready to export out of the USE marketplace but is [in] the process of ramping up its manufacturing to suit our australia (sic) market place demands, we are monitoring the process and development.
3. All products we are creating and importing into australia (sic) are in line with the theme we are creating and in support of NON DRIVING UNDER THE INFLUENCE where purchasing our products will promote people/consumers with a MOTHERS ADVICE MOTHERS AGAINST DRIVING UNDER THE INFLUENCE OR DRUNK DRIVING.
Based on the above, the Opponent submits the Applicant had no intention to use the Trade Mark in Australia for any of the goods applied for. Rather, “the products RECEPTOL and RUNA may be the products of interest” and instead the Applicant may not be using the Trade mark for the claimed goods, but is “contemplating providing education (or similar) services regarding the impacts and risks of drunk or drug driving.”[60]
[60] Opponent Submissions, paragraph 130
I would note no evidence has been supplied by the Opponent to substantiate this bald assertion. Therefore, to accept the Opponent’s argument I must be prepared to draw a number of inferences from a particular interpretation of the statements contained in Coglitore. In short, I am not.
The above statements do not lead me to the conclusion that the Applicant intended to the use the Trade Mark in relation to services to the exclusion of the claimed goods. Neither does the Opponent’s mere questioning of the Applicant’s intentions shift the onus to the Applicant.[61]
[61] Apple Inc v Artistic Licence International [2009] ATMO 15, [21].
Consequently, in my mind, the Opponent’s concerns here amount to a mere allegation rather than establishing a prima facie case for the Applicant to answer.[62] As no prima facie case has been made out, the Opponent has not shifted the onus and I find the Opponent has not established its ground under s 59 of the Act.
[62] See for example .Masi Agricola SpA v Oceans Estate Margaret River Pty Ltd [2015] ATMO 38.
Section 62A
Section 62A of the Act provides:
Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
A determination of bad faith in filing a trade mark application will arise in circumstances where “persons adopting proper standards would regard the decision to register as in bad faith, or that reasonable and experienced persons in the field would view such conduct as falling short of acceptable commercial behaviour.”[63] Such a test is one which combines both subjective and objective elements[64] and a consideration of all circumstances surrounding the application to register are relevant.[65]
[63] Fry Consulting Ltd v Sports Warehouse Inc. (No 2) [2012] FCA 81, [174].
[64] Gene Schirripa Anthony Bomball and Daniel Turner v MMJ Holdings Pty Ltd [2017] ATMO 138, [16].
[65] DC Comics v Cheqout Pty Ltd [2013] FCA 478, [62].
In this matter the ground of opposition pursuant to s 62A of the Act was particularized in the SGP as follows:
As noted above, the MOTHER trade marks are well known in Australia in relation to beverages, including energy drinks and nutritional supplements. The Applicant should therefore have been aware of the Opponent and its trade mark rights at the time of filing the application for directly overlapping goods and should have known that it was not entitled to file a mark including the element “MOTHER” for the goods applied for.
The Application was accordingly filed in bad faith.
In its submissions, it was put forward that the fame and reputation of the Mother brand would be such that the Applicant would likely have had knowledge of the Opponent, and in adopting proper standards, would not have believed their application for the Trade Mark was made in good faith.
Even if the Applicant was aware of the Mother Mark at the time of filing, I do not consider this fact alone compels a finding of bad faith. In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (‘Sports Warehouse’) Dodds-Streeton J observed the following:
... The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[66]
[66] [2012] FCA 81, [147].
100. Her Honour continued further on to say:
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[67]
[67] Ibid, [165]-[166].
101. Consequently, awareness of the Opponent and the Opponent’s trade marks is not of itself fatal.[68] Relevantly, Coglitore, in dismissing the allegation of bad faith, asserts the Trade Mark has its own identity.[69] I am inclined to agree.
[68] Next Group Plc v Nexcorp Australia Proprietary Limited. [2016] ATMO 34, [77]. The Delegate here referring to the Courts discussion relating to honest concurrent use by the Court in McCormick & Co Inc v McCormick [2000] FCA 1335, [33].
[69] Coglitore, paragraph [5].
102. I have already discussed at length the differences between the Trade Mark and the Opponent’s trade marks. All circumstances are relevant and taking such marked differences into consideration I am not convinced the Applicant’s conduct, in filing for the Trade Mark as they have, falls into the category of being unscrupulous or underhanded. In short, I am not persuaded the Applicant has engaged in conduct amounting to bad faith.
103. Although not particularized in the SGP I will, for completeness, mention evidence led in Sacks 2 as to the existence of a United States organization called Mothers Against Drunk Driving or MADD (‘the US Organization’). Several screenshots, captured on 10 January 2017, of the US Organization’s website were reproduced for me to consider.[70] Mr. Sacks states that, based on the website, there was no apparent affiliation, endorsement or association between the Applicant and the US Organization.[71]
[70] Sacks 2, paragraph [12].
[71] Ibid, paragraph [13].
104. In light of there being no apparent relationship, nor the Applicant having disclosed one with the US Organization, the Opponent’s representatives submitted, in the alternative, the Applicant’s adoption of the Trade Mark, having knowledge of the US Organization, amounts to bad faith.
105. I find that the Opponent’s arguments here are based on a number of unsupported assumptions. Setting aside the tenuous relevance to the Trade Mark, I think it sufficient to note that mere speculative comments on the existence of a relationship between the Applicant and the US Organization will not, without more, result in a finding of bad faith.
106. The onus is on the Opponent to establish bad faith and such a finding will not be made lightly given the serious nature of the allegation.[72] On the facts before me, I find the Opponent has not established a ground of opposition under s 62A of the Act.
[72] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
Decision
107. Section 55 of the Act provides:
Decision
(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a) to refuse to register the trade mark; or
(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note: For limitations see section 6.
108. The Opponent has failed to establish any of the grounds of opposition nominated in the SGP. Trade Mark application no. 1710869 may therefore proceed to registration in no less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise the disposition of the application should be in accordance with the Court’s discretion.
Costs
109. Although the Applicant made no mention of costs, The Opponent has requested an award of costs. I see no reason to depart from the general rule that costs follow the event and I award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Trade Marks Regulations 1995.
Aaron Walters
Hearing Officer
Opposition and Hearings
6 March 2018
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