LD&D Australia Pty Ltd v the a2 Milk Company Limited

[2019] ATMO 110

TRADE MARKS ACT 1995

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

Re: Opposition by LD&D Australia Pty Ltd to registration  of  trade  mark  application 1708342 (5, 29) - a2 Milk - in the name of The a2 Milk Company Limited

DELEGATE:

Katrina Brown

REPRESENTATION:

Opponent: Gabriella Rubagotti of Counsel instructed by Judith King and Elisabeth White of Baker McKenzie

Applicant: Richard Cobden of Counsel instructed by Richard Watts of Simpson Grierson Lawyers

DECISION:

2019 ATMO 110

Trade Marks Act 1995 – section 52 opposition – ground pursued under s

41 - s 41(3) established – registration refused.

Background

1. This decision is in respect of an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) by LD&D Australia Pty Ltd (‘the Opponent’) to the registration of the following trade mark:

Trade Mark Number:

1708342

Trade Mark:

a2 Milk (‘the Trade Mark’)

Applicant:

The a2 Milk Company Limited (‘the Applicant’)

Filing Date:

20 July 2015

Specification:

Class 5: Infant foods; milk and milk powder for infants

Class 29: Milk and milk products in this class; other goods in this class which include milk or milk products as ingredients

(‘the Designated Goods’)

1. The Trade Mark was examined as required under s 31 of the Act. Acceptance of the Trade Mark was advertised in the Official Journal of Trade Marks on 15 June 2017.

1. The Opponent filed a Notice of Intention to Oppose on 22 August 2017 followed by a Statement of Grounds and Particulars (‘SGP’) on 22 September 2017.

1. The Applicant filed a Notice of Intention to Defend on 15 November 2017.

1. In due course the parties filed evidence in support of the opposition, evidence in answer and evidence in reply.

1. The matter came before me, a delegate of the Registrar of Trade Marks, in Sydney on 28 March 2019. The Opponent was represented by Gabriella Rubagotti of Counsel, instructed by Judith King and Elisabeth White of Baker McKenzie. The Applicant was represented by Richard Cobden of Counsel, instructed by Richard Watts of Simpson Grierson Lawyers.

Grounds of opposition and onus

1. The Opponent nominated s 41 as the only ground of opposition in the SGP.

1. The Opponent bears the onus of establishing the ground of opposition.1 The standard of proof is the ordinary civil standard of the balance of probabilities.2

1. In respect of s 41 the date at which the rights of the parties are to be determined is the filing date of the trade mark application3 which is 20 July 2015.

Evidence

10.The parties rely on the following declarations:

Evidence in support

• Declaration of Nicole Doolette (Opponent’s Innovation Strategy Manager) made on 22 February 2018 with Annexures ND-1 to ND-55 (‘Doolette 1’);

• Declaration of Jarrod Swaine (National Marketing Manager of Ritchies Stores Pty Ltd) made on 21 February (‘Swaine Declaration’); and

• Declaration of Adam Francis (Executive Creative Director of AJF Partnership) made on 22 February 2018 (‘Francis Declaration’).

1 Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].

2 Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [132].

3 Apple Inc. v Registrar of Trade Marks [2014] FCA 1304, [59].

Evidence in answer

• Declaration of Susan Massasso (Applicant’s Global Chief Marketing Officer) made on 29 May 2018 with Exhibits SM-1 to SM-101 (‘Massasso Declaration’); and

• Declaration of Andrew John Clarke (Applicant’s Chief Scientific Officer) made on 28 May 2018 with Exhibits AJC-1 to AJC-2 (‘Clarke Declaration’).

Evidence in reply

• Declaration of Nicole Doolette made on 10 September 2018 with Annexures ND- 56 to ND-59 (‘Doolette 2’).

11.After the period for filing evidence in reply had ended, the Opponent filed the declaration of Elisabeth Jane White made on 22 October 2018 (‘White Declaration’).

12.The Opponent sought an extension of time in respect of the period for filing evidence in reply. I considered the Opponent’s request in accordance with reg

5.15 of the Trade Mark Regulations 1995 (‘the Regulations’). The submissions did not satisfy me that the Opponent had acted promptly and diligently at all times during the period. Nor was I satisfied that there were exceptional circumstances justifying the extension. Accordingly, I refused to grant the extension of time for filing evidence in reply.

13.As the extension of time was not granted, the White Declaration is material filed out of time. In certain circumstances it may be appropriate for a delegate to consider such material. As the delegate I may do so, as I am not bound by the  rules of evidence but may be informed on any matter in a way that I reasonably believe to be appropriate.4 However in this matter the Opponent did not make out  a compelling case in favour of the White Declaration being considered. Consequently, on 28 February 2019 I informed both parties that I would not have regard to the White Declaration when making my determination in  this proceeding.

4 Reg 21.15(4) of the Regulations.

The Applicant

14.The Applicant is the parent company within The a2 Milk Company group. The Massasso Declaration includes the following information about the Applicant and The a2 Milk Company group:

[10]…founded as A2 Corporation Limited in 2000 by Dr Corran McLachlan and Howard Paterson. While studying at Cambridge University, Dr Corran McLachlan learned that proteins in milk affect people differently. More specifically, he learned that ordinary cows produce milk with different beta- casein protein type, called A1 and A2…From there [The a2 Milk Company group] was born with the intention of bringing A1 protein free dairy products to consumers.

…

[12] Until around 2010, [the a2 Milk Company group] operated as an intellectual property licensor, where it licensed its intellectual property in relation to A1 protein free dairy products to third parties…From 2010 onwards, [the a2 Milk Company group] became a milk producer in its own right…

15.In April 2014, the A2 Corporation Limited changed its name to The a2 Milk Company Limited.

The Opponent

16.The Opponent is owned by Lion Pty Ltd and is a subsidiary of Lion-Dairy & Drinks Pty Ltd. Doolette 1 includes the following information about the Opponent and its business:

[7] LD&D develops, manufactures, markets and sells a broad range of dairy and juice products with core activities in milk, yoghurt, cream, dairy desserts, juice and speciality cheese throughout Australia. The portfolio of products includes market leading brands across Australia and New Zealand.

[8]…LD&D processes, markets and sells white milk under two key company brands – PURA and Dairy Farmers. It also sells other milk and dairy products under the following brands:

(a)    white milk and flavoured milk such as The Complete Dairy, Masters, Dare Iced Coffee, Moove, Farmers Union Iced Coffee and Big M;

(b)    cheese products such as King Island Dairy, South Cape, Mersey Valley and Tasmanian Heritage;

(c)    yoghurt products such as Yoplait, Farmers Union and Dairy Farmers Thick & Creamy; and

(d)    creams and custards such as PURA and Dairy Farmers.

Protein composition of milk

17.Both parties have provided evidence about the protein composition of milk. At the most rudimentary level (protein composition 101, if you will) the relevant information can be summarised as:

·milk contains beta-casein protein;

·originally all cows produced milk containing only A2 beta-casein protein;

·due to genetic mutation other variants of beta-casein protein emerged including A1 beta-casein protein;

·depending on the genetics of the cow, its milk will contain only A1 beta- casein protein, only A2 beta-casein protein or a combination of both;

·scientific studies suggest that there is a difference in digestive response to milk containing A1 beta-casein protein as compared to milk that does not contain A1 beta-casein protein.

Section 41

18.Section 41 of the Act relevantly provides:

Trade mark not distinguishing applicant’s goods or services

(1)An application for the registration of a trade mark must be rejected  if  the trade mark is not capable of distinguishing the applicant’s goods or  services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

…

(2)A trade mark is taken not to be capable of distinguishing  the  designated goods or services from the  goods  or  services  of  other  persons  only  if either subsection (3) or (4) applies to the trade mark.

(3)This subsection applies to a trade mark if:

(a)   the trade mark is not to any  extent  inherently adapted  to  distinguish the designated goods or services from the goods or services of other persons; and

(b)     the applicant has not used the trade mark before the filing date  in respect of the application to such  an  extent  that  the  trade  mark  does in fact distinguish the designated goods or  services  as being those of  the applicant.

(4)This subsection applies to a trade mark if:

(a)    the trade mark is, to some extent, but not  sufficiently,  inherently  adapted to distinguish the designated goods or services from the goods  or services of other persons; and

(b)    the trade mark does not and will not distinguish the designated goods or services as being those of the  applicant  having  regard  to  the  combined effect of the following:

i.the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or

services of other persons;

ii.the use, or intended use, of the trade mark by the applicant;

iii.any other circumstances.

Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services…

(5)   For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be

a use of the trade mark by the applicant.

19.The Opponent submits that the Trade Mark is not to any extent inherently adapted to distinguish the Designated Goods. Furthermore, the Opponent asserts that the Applicant’s evidence of use before the filing date is not sufficient to establish that the Trade Mark does in fact distinguish the Designated Goods as being those of  the Applicant.

20.The Applicant contends that the Trade Mark is at least somewhat inherently adapted to distinguish the Designated Goods. Furthermore, the Applicant asserts that its evidence of use is of such an extent that not only is it sufficient for the purposes of s 41(4), it also demonstrates that prior to the filing date the Trade Mark did in fact distinguish the Designated Goods as being those of the Applicant.

21.My first consideration is the extent to which the Trade Mark is inherently adapted to distinguish the Designated Goods from the goods of other traders.

Inherent adaptation to distinguish

22.The inherent adaptation of a trade mark is to be tested:

[B]y reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by  proper  motives  –  in  the  exercise,  that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the  sake  of  the signification which they ordinarily possess – will think of the word  and  want  to  use  it  in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.5

23.This is a two-step process.6 The first step is to identify the signification which the words ordinarily possess (ordinary signification). The second step is determine

5 Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55, [5].

6 Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, [71] (‘Cantarella’).

whether other traders might legitimately need to use the words for the ordinary signification in respect of their own similar goods and services.

Ordinary signification

24.The ordinary signification is the ordinary meaning of the words to any person in Australia concerned with the goods or services to which the proposed trade mark is to be applied.7

25.The Opponent asserts that the ordinary meaning of the expression ‘a2 Milk’ is that the milk, or milk products, predominantly or exclusively contain the A2 beta- casein protein. In support of this assertion, the Opponent relies upon the following definition given in the Macquarie Dictionary:

A2 milk

noun milk which contains only A2 beta-casein proteins, thought to be less allergenic than milk which contains A1 proteins.

26.The Applicant contends that no weight should be given to the inclusion of ‘A2 milk’ in the Macquarie Dictionary. The Applicant points to Moroccanoil Israel Ltd v Aldi Foods Pty Ltd (‘Moroccanoil’)8 as authority for this contention.  It  is the Applicant’s view that:

in Moroccanoil the long-serving editor of the Macquarie Dictionary was criticised for her approach in determining whether words (notably, there, words that had come into Australian usage only through the trade mark claimant) should be included in the Macquarie Dictionary. The process was deeply flawed.9

27.Whilst there certainly was criticism in Moroccanoil of the testimony of the editor of the Macquarie Dictionary, the criticism was largely limited to the process by which it was determined that the term ‘Moroccan oil’ should be included in the dictionary, most notably that the editor had not kept records, nor could she remember, the source material she had relied upon when she made the decision to include the term in the dictionary. 10 In my opinion, the criticism in Moroccanoil is

7 Ibid [70].

8 [2017] FCA 823.
9 Applicant’s hearing submissions [31].

10 Moroccanoil (n 8) [653].

applicable to the particular facts in that matter; it does not rise so high as being a general statement in regard to the repute of the Macquarie Dictionary.

28.Even if I were to entirely disregard the definition in the Macquarie Dictionary, that would not be the end of the matter. Many expressions have ordinary meanings despite not being defined in a dictionary, for example ‘ham sandwich’.11 Like  ‘ham sandwich’, the ordinary meaning of the composite expression ‘a2 Milk’ is derived from the meaning of its parts.

29.The parties are not in disagreement as to the meaning of the word ‘milk’. It is a cornerstone of each of their businesses and they accept that its ordinary meaning in the context of the Designated Goods is that of a white consumable liquid. The parties are far more discordant with respect to the meaning of ‘a2’.

30.The Opponent asserts that the ordinary signification of ‘a2’ in the context of the Designated Goods is the A2 beta-casein protein found in milk. The Applicant counters with evidence from its now former Chief Scientific Officer, Mr. Clarke, who deposes that ‘the term “A2” does not signify any substance or compound in and of itself’12 and that the ‘terms A1 beta-casein protein and A2 beta-casein protein are legitimate scientific terms and continue to be the correct descriptions for those proteins’.13

31.I have no doubt that scientifically, the formal description is A2 beta-casein  protein. However, this does not preclude ‘A2’ from also being understood as a reference to that protein and the evidence before me demonstrates that is in fact  the case. There are numerous examples in the Opponent’s evidence which show ‘A2’ being used as a shortened form of, or reference to, A2 beta-casein protein. Examples before the filing date include:

• ‘A1 and A2 refer to different proteins that can occur in milk depending on the breed of the cow – some cows produce mostly A1 milk, others mostly A2’.14

• 
  

  ‘Cows’ milk beta-casein contains 209 amino acids. The A1 and A2 variants differ only at position 67…’.15

11 Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [84].

12 Clarke Declaration [18].
13 Ibid [22].

14 Doolette 1 Annexure ND-28.

32.Indeed, the Applicant’s own evidence supports that ‘A2’ is understood to be a reference to the A2 beta-casein protein. For example, Ms. Massasso deposes that the Applicant ‘does not object to use of “A2” by third parties on trade mark grounds where “A2” is used descriptively to directly describe the A2 beta casein protein’.16 I also note that the Wayback Machine® captures of the Applicant’s website demonstrate the Applicant using ‘A2’ as a reference to A2 beta-casein as early as 14 April 2005 with statements such as ‘A proportion of cows naturally produce milk that contains A2 beta casein (A2)’.17 I am satisfied that at the filing date it was well-established that ‘A2’ was a shorthand expression for the A2 beta- casein protein. I am also satisfied that this meaning is retained even when the minuscule ‘a’ is used.

33.Furthermore, the evidence suggests that by the filing date consumers of dairy products had come to understand ‘A2’ in combination with words such as ‘dairy’ or ‘milk’ as not only indicating that the milk or dairy products contained the A2 beta-casein protein but that they did so to the exclusion of the A1 beta-casein protein; that is that the dairy products did not contain the A1 beta-casein protein.

34.Having considered the meaning of ‘A2’ and ‘milk’ and the totality of the evidence before me, it is my opinion that the expression ‘a2 Milk’ would generally have been understood at the filing date as indicating that the milk contained the A2 beta-casein protein. In respect of the Designated Goods which are not milk, it is my opinion that the expression would generally have been understood as indicating that milk containing the A2 beta-casein protein was an ingredient of those dairy products. Furthermore, it is also likely that a portion of consumers of dairy products would have understood ‘a2 Milk’ as indicating that the milk or  milk products predominantly or exclusively contained the A2 beta-casein protein.

Other traders

35.The enquiry now turns to whether other traders might legitimately desire to use the expression ‘a2 Milk’, or something so nearly resembling it, for its ordinary signification in respect of the Designated Goods.18

15 Ibid ND-29.

16 Massasso Declaration [215].
17 Ibid Exhibit SM-10.

18 Cantarella (n 6) [71].

36.The Applicant contends that the Opponent’s evidence does not show any examples of other traders using ‘A2 milk’ or ‘a2 Milk’ and that:

there is certainly no evidence that the terms a2 or A2 were ever used by anyone in the milk and dairy industry before [the Applicant] devised its products and began marketing them. [The Applicant] was the first – and is still the only – trader in Australia to employ a2 Milk as a brand in relation to dairy products.19

37.These contentions are of little assistance to the Applicant. Firstly, the  ‘other traders test’ focuses on the common right of the public to make honest use of words for the sake of their ordinary signification; it does not look to the likelihood of other traders wanting to, or in fact, using the words as a trade mark, brand or sign. Accordingly, the fact that other traders are not using ‘a2 Milk’ as a brand does not strengthen the Applicant’s position.

38.Secondly, evidence demonstrating that other traders are using the Trade Mark or something so nearly resembling it, for its ordinary signification can be instructive, but the absence of such evidence is not determinative. In this respect I refer to the following observations of Murphy J in Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited:

[I]t is not necessary for an opponent to registration to establish that the trade mark is required by other traders. It is enough if innocent traders want to use it. For example in Clark Equipment at 513 to 514 Kitto J spoke to the “desire” of other traders to use the same mark, and said that traders may “think of the word and want to use it”. In Burger King at 425 Gibbs J took the reference to “likelihood” by Kitto J as a reference to whether another trader “might”, without improper motive, want to use the mark.20

Whilst I intend no criticism of the Applicant’s actions in defending its intellectual property rights as it sees them, in this matter it seems likely that the  Applicant’s strong stance may have discouraged at least some traders from using the words ‘a2 Milk’, or something so nearly resembling it (e.g. a2 milk, A2 Milk, A2 milk), for their ordinary signification.

39.Thirdly, it may well be that the term ‘a2’ or ‘A2’ was not used in the milk and dairy industry prior to the Applicant devising and launching its product in 2003. But, as it was so succinctly observed in Aldi Foods Pty Ltd v Moroccanoil Israel

19 Applicant’s hearing submissions [35].

20 [2014] FCA 373, [200].

Ltd, ‘that [is], with respect, the wrong year to be asking the question’.21 The correct question is whether as at 20 July 2015 other traders, without improper motives, desired to use ‘a2 Milk’ or something so nearly resembling it in relation to their milk and milk products.

40.The Opponent’s evidence demonstrates that traders regularly describe their dairy products in terms of the type, nature, nutrient content and components of the milk. Notably, the evidence demonstrates that by 2015 traders were increasingly emphasising the protein composition of their dairy products. The Opponent has provided examples, before the filing date, of traders marketing dairy products with reference to the A2 protein content including:

I also note that it is deposed that the Opponent began referring to the A2 protein content of its PURA and Dairy Farmers milk products in May 2014 and July 2014 respectively. This is supported by a media statement released by the Opponent on 21 May 2014.22

41.

The evidence demonstrates that by the filing date, it was somewhat on trend for dairy products, especially milk, to be marketed by reference to the A2 beta-casein protein content. I do not consider that such use can, on the evidence before me, be considered improperly motivated for the purposes of the ‘other traders test’. I

21 [2018] FCAFC 93, [135].

22 Doolette Declaration Annexure ND-43.

acknowledge that some traders may have emphasised the A2 beta-casein component of their dairy products to compete with the Applicant’s products. However, there is no evidence that other traders have sought to assert a connection between their milk products and the Applicant by using ‘A2’. Notably, each of the examples above at [40] clearly identify the trade source, for example Bodalla Dairy and Sunnydale Dairy. In the words of Sundberg J, ‘competition should not readily be considered improper, particularly in circumstances where the [words] in suit bear an ordinary signification’.23

42.Given that by the filing date there was a tendency for traders to emphasise the A2 beta-casein protein content of their dairy products, combined with the fact that the ordinary signification of the words ‘a2 Milk’ amounts to a direct reference to the character of the Designated Goods, I am satisfied that by the filing date a trader might, without any improper motive, want to use ‘a2 Milk’ or something so nearly resembling it, in connection with their milk or milk products that contained the A2 beta-casein protein.

43.In my opinion, the Trade Mark is not to any extent inherently adapted to distinguish the Designated Goods; it is a combination of words which ‘cannot do the job of distinguishing [the Designated Goods] without first educating the public that it is a trade mark’.24 Accordingly, it should be considered under s 41(3) of the Act.

44.As I have found that the Trade Mark is not to any extent inherently adapted to distinguish the Designated Goods, the ground of opposition will be established if the Applicant has not used the Trade Mark before the filing date to such an extent that the Trade Mark does in fact distinguish the Designated Goods as being those of the Applicant.

45.Accordingly, I now turn to the evidence of the Applicant’s use of the Trade Mark.

Evidence of use

23 The Chocolaterie Guylian N.V. v The Registrar of Trade Marks, [2009] FCA 891, [81].

24 British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281, 306.

46.Factual distinctiveness is assessed at the filing date.25 As such, examples of use which are dated after the filing date, or not dated at all, are of no, or little, assistance in establishing that the Trade Mark did in fact distinguish the Designated Goods as being those of the Applicant at the filing date. The following exhibits to the Massasso Declaration consist of material that is undated or dated after the filing date: Exhibits SM-7, 8, 9, 11, 13, 14, 15, 16, 19, 20, 22, 23, 24, 25, 26, 49, 50, 51, 52, 53, 54, 55, 57, 59, 60, 61, 62, 63, 64, 65, 66, 67, 72, 73, 74, 75, 76, 77, 78, 80, 82, 83, 84, 86, 87, 90, 91, 93, 95 and 100.

47.The Massasso Declaration states that the Applicant has used ‘a2 Milk’ as a trade mark since 2003; that is approximately 12 years before the filing date. The evidence supports that the Applicant has sold milk in Australia since 2004, however the other Designated Goods have been available for significantly less time: yoghurt was first sold in January 2010; infant formula in September 2013; thickened cream in January 2014; milk powder in May 2015 (just one month before the filing date) and ice-cream was not sold until after the filing date.

48.The Applicant’s evidence contains very few, if any, examples of how the Trade Mark has been used before the filing date in relation to any of the Designated Goods other than milk. The examples of use in relation to milk before the filing date show use of ‘a2 Milk’ in various stylised forms including:

49.As stated in Woolworths Ltd v BP Plc (No 2):

The trade mark that is the subject of the application must conform with the trade mark that was used before the relevant filing date, because it is the extent to which that prior use has distinguished the designated goods or services as being those of the applicant which must be assessed.26

25 Apple Inc. v Registrar of Trade Marks (n 3) [220].

26 [2006] FCAFC 132, [79].

50.Use of the stylised forms will only constitute use of the Trade Mark if the additions or alterations do not substantially affect the identity of the Trade Mark.27 In Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) Dodds-Streeton J relevantly observed:

the addition or subtraction of a prominent element to or from a mark which is capable of distinguishing only as a combination is likely to affect the identity of the mark.28

51.With respect to the first stylised form reproduced above at [48], the splash device is visually striking. The addition of this device element to the words ‘a2 Milk’, which I have already found to be utterly devoid of the capacity to distinguish the Designated Goods, forms a combination that is capable of distinguishing. Similar logic applies to the second and third stylised forms each of which contain the splash device plus additional word and or device elements which form combinations capable of distinguishing and as such affect the identity of the Trade Mark. Therefore, I do not consider use of the first three stylised forms to be use of the Trade Mark.

52.I do consider use of the fourth stylised form to be use of the Trade Mark. However, this stylised form was only used for approximately six months immediately prior to the filing date29 and I note that Ms. Massasso declares on behalf of the Applicant that:

Between 2009 and November 2014, [the Applicant] predominantly used stylised marks containing only “a2”, rather than “a2 Milk”. This was consistent with [the Applicant’s] previous company names for its corporate and Australian businesses, A2 Corporation Limited and A2 Dairy Products Australia Pty Limited. The “a2” mark was the company’s dominant and distinctive brand element across its corporate identity and retail brands during this period (emphasis added).30

53.The evidence does contain examples of the Applicant using the plain words ‘a2 Milk’. In some instances, this use does not clearly impart trade mark significance. For example, many of the television and radio advertisements  contain comparisons between A1 and A2 milk or between A2 milk and full fat milk, rice milk, soy milk etc. Given that there is no A1 brand of milk and that full fat milk,

27 Section 7(1) of the Act.

28 [2012] FCA 81, [112].
29 Massasso Declaration [38].

30 Ibid [40].

rice milk etc. are generic descriptors of types of milk, I am not satisfied that consumers would necessarily have identified the words ‘a2 Milk’ as a badge of origin in those circumstances. This is particularly likely in the advertisements which suggested that ‘A2’ was in fact the badge of origin by, for example, using language such as the ‘a2 brand of milk’ or ‘the milk called A2’ or showing bottles of milk with labels such as:

54.The evidence does also show the Applicant using the words ‘a2 Milk’ with the ™ symbol before the filing date. This use is on, for example, the Applicant’s website and on the label on the back of the bottles of milk. The difficulty is that this use is typically in the shadow of other signs such as the first three stylised forms of ‘a2 Milk’ set out above at [48] or the ‘a2’ signs reproduced above at [53]. I acknowledge that it is a commercial reality that multiple signs are often used together. The question is whether the evidence before me demonstrates that the Trade Mark is acting, in its own right, as a badge of origin notwithstanding the presence of the other signs. This requires consideration from an objective viewpoint of the purpose and context of the use31 including:

Consideration of the totality of the packaging, including the way in which the words are displayed in relation to the goods and the existence of a clear and dominant brand.32

55.My impression is that it is the other signs that are typically acting as the key, distinctive identifiers of the products. I will use the examples provided by the Applicant of the labelling on their bottles of milk in various years between 2004

31 Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 425.

32 Nature’s Blend Pty Ltd v Nestle Australia [2010] FCAFC 117, [19].

and 2014 to demonstrate my point of view. These examples show that up until December 2014 the front labels consisted of prominently displayed signs, none of which were the Trade Mark. The Trade Mark was only on the back label and it was not prominent. Given that the Applicant’s products are displayed in retail stores with only the front label visible, if I place myself in the position of a ‘consumer going up and down the busy supermarket aisles, or surveying the serried ranks of products in the fridges at a convenience store’33 I would not have seen the Trade Mark on the Applicant’s product until December 2014. In my opinion the prominent use of distinctive signs in close proximity to the Trade Mark makes it difficult to conclude that the words alone have become distinctive of the Applicant’s products.

56.The Applicant has provided impressive revenue figures and advertising expenditure. The relevance of these figures depends on whether they can be linked to sales and other relevant transactions that have occurred by reference to, or in relation to, the Trade Mark. Given the various signs used by the Applicant in relation to milk, it is not clear what portion of the revenue and expenditure is attributable to use of the Trade Mark, or one that consists of additions or alterations that do not substantially affect its identity.

57.When I weigh the evidence before me together with the extent that the Trade  Mark is inherently adapted to distinguish the Designated Goods, I find that the combined effect is not sufficient to satisfy me that the plain words ‘a2 Milk’ did in fact distinguish the Designated Goods as being those of the Applicant at the filing date.

58.The s 41 ground of opposition has been established.

Decision

59.Section 55 of the Act relevantly provides:

(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;

33 Applicant’s submissions [61].

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

60.The Opponent has established the ground of opposition under s 41 of the Act. Accordingly, I refuse to register trade mark number 1708342.

Costs

61.The parties sought costs. It is usual for costs to follow the event, and I see no reason to depart from that principle. I award costs against the Applicant according to the official scale set out in Schedule 8 of the Trade Marks Regulations 1995.

Katrina Brown Hearing Officer

Oppositions & Hearings Trade Marks & Designs 22 July 2019