Opposition by Energy Beverages LLC to application under section 92 of the Act by Cantarella Bros Pty Limited to remove trade mark number 1345404 (32) – MOTHERLAND - in the name of Energy Beverages LLC.
[2020] ATMO 198
•21 December 2020
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re: Opposition by Energy Beverages LLC to application under section 92 of the Act by Cantarella Bros Pty Limited to remove trade mark number 1345404 (32) – MOTHERLAND - in the name of Energy Beverages LLC.
| Delegate: | Bianca Irgang |
| Representation: | Opponent: Siobhan Ryan of counsel instructed by Elizabeth Godfrey of Davies Collison Cave Non-Use Applicant: Angus Lang, of counsel instructed by Jeremy Herz of Herbert Smith Freehills |
| Decision: | 2020 ATMO 198 Trade Marks Act 1995 (Cth) –Application under section 92(4)(b) – No use established during the relevant period on any of the goods – Trade Mark to be removed. |
Background
This matter is an opposition proceeding under section 96 of the Trade Marks Act 1995 (‘the Act’) in which by an application under subsection 92(4)(b) filed on 12 February 2019, Cantarella Bros Pty Limited (‘the non-use applicant’) has sought the removal from the Register of the MOTHERLAND (‘Trade Mark’) appearing below in respect of all the goods in class 32 for which it is registered:
Trade mark: MOTHERLAND
Trade mark number: 1345404
Date of registration: 2 November 2010
Goods:Class 32: Non-alcoholic beverages; drinking waters, flavoured waters, mineral and aerated waters; carbonated soft drinks, energy drinks and sports drinks; fruit drinks and juices; syrups, concentrates and powders for making beverages including syrups, concentrates and powders for making mineral and aerated waters, carbonated soft drinks, energy drinks, sports drinks, fruit drinks and juices
Energy Beverages LLC (‘the opponent’) filed a Notice of Intention to Oppose Removal on 10 April 2019 followed by a Statement of Grounds and Particulars on 9 May 2019.
The Statement of Grounds and Particulars asserted that the grounds on which the non-use applicant relied were not relevant because the opponent had used the trade mark MOTHER (whether in combination with other words or alone) in relation to beverages and related goods and services during the non-use period of 12 January 2016 to 12 January 2019, in good faith. The opponent stated that the use includes use of its various marks in relation to a range of beverages, including energy drinks, including on the cans of those beverages, on the opponent’s website, social media, via point of sale material on-premise, outdoor advertising and in radio and television advertisements.
On 10 July 2019 the non-use applicant filed its Notice of Intention to Defend. The opponent then filed evidence in accordance with the Trade Mark Regulations 1995 (‘the Regulations’).
The matter came before me for a decision, as a delegate of the Registrar of Trade Marks on 2 September 2020. Siobhan Ryan of Counsel instructed by Elizabeth Godfrey of Davies Collison Cave appeared on behalf of the opponent. Angus Lang, of counsel instructed by Jeremy Herz of Herbert Smith Freehills appeared on behalf of the non-use applicant.
Legal Framework
Part 9 of the Act governs the removal of trade marks from the Register for non-use. The sections of that part which are most relevant to the case in hand are sections 92, 96, 100 and 101.
Section 92 provides, inter alia, that a person may apply to the Registrar to have a trade mark removed from the Register because it has not been used for a continuous period of three years. The removal application must be in accordance with the Regulations[1] and may be made in respect of any or all of the goods and services in respect of which the Trade Mark is registered. Subsection 92(4)(b) as it is relevant to this case provides the following:
[1] Regulations 9.1 to 9.4 are relevant here.
(4) An application under subsection (1) or (3) (non‑use application) may be made on either or both of the following grounds, and on no other grounds:
(a) that, on the day on which the application for the registration of the trade mark was filed, the applicant for registration had no intention in good faith:
(i) to use the trade mark in Australia; or
(ii) to authorize the use of the trade mark in Australia; or
(iii) to assign the trade mark to a body corporate for use by the body corporate in Australia;
In relation to the goods and/or services to which to non-use application related and that the registered owner:
(iv) has not used the trade mark in Australia; or
(v) has not used the trade mark in good faith in Australia;
In relation to those goods and service at any time before the period of one month ending on the day in which the non-use application is filed;
(b) that the trade mark has remained registered for a continuous period of 3 years ending one month before the day on which the non‑use application is filed, and, at no time during that period, the person who was then the registered owner:
(i) used the trade mark in Australia; or
(ii) used the trade mark in good faith in Australia;
in relation to the goods and/or services to which the application relates.
As the Registrar’s delegate observed in Courier Luggage Pty Ltd v Wenger SA Inc[2]:
Section 100(1) of the Act provides that the opponent bears the onus of rebutting the allegation made against it under s92(4) which it may do by, inter alia, establishing that the trade mark, (or, per section 100(3)(a), the trade mark with additions or alterations not substantially affecting its identity), was used by the registered owner in good faith during the relevant period. I proceed on the basis that the relevant standard of proof is on the balance of probabilities.
The required use is as a trade mark, that is to say it is as a badge of origin in that it indicates a connection in the course of trade between the goods and the person who applies the mark to the goods: for example see E&J Gallo Winery v Lion Nathan Australia Pty Ltd (2010) 241 CLR 144 at [41] – [43].
The use must be genuine commercial use in accordance with the test in Imperial Group Ltd v Philip Morris & Co [1982] FSR 72. A single bona fide use of the trade mark during the non-use period may be sufficient to resist an application for removal: Woolly Bull Enterprises Pty Ltd v Reynolds [2001] FCA 261; (2001) 51 IPR 149 at [17]. However, Wilberforce J, in Nodoz Trade Mark (1962) RPC 1 (Nodoz) at 7, said that if a registered owner relies on one single act of use of the trade mark, then that single act ought to be established by “if not conclusive proof, at any rate overwhelmingly convincing proof.”
The tribunal may not be persuaded by evidence that is solely from the internal files of the opponent: Nodoz, supra; or of a circumstantial nature: Trina Trade Mark [1977] RPC 131; although one invoice, if genuine, may suffice: Geo W McPherson v Remington (1999) 47 IPR 636.
[2] [2015] ATMO 10
Further, section 101 of the Act deals with the Registrar’s discretion:
Determination of opposed application—general
(1) Subject to subsection (3) and to section 102, if:
(a) the proceedings relating to an opposed application have not been discontinued or dismissed; and
(b) the Registrar is satisfied that the grounds on which the application was made have been established;
the Registrar may decide to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(2) Subject to subsection (3) and to section 102, if, at the end of the proceedings relating to an opposed application, the court is satisfied that the grounds on which the application was made have been established, the court may order the Registrar to remove the trade mark from the Register in respect of any or all of the goods and/or services to which the application relates.
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
(4) Without limiting the matters the Registrar may take into account in deciding under subsection (3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by its registered owner in respect of:
(a) similar goods or closely related services; or
(b) similar services or closely related goods;
to those to which the application relates.
Note 1: If the registered owner of the trade mark has authorised another person to use it, any authorised use of the trade mark by that person is taken to be a use of the trade mark by the registered owner (see subsection 7(3)).
Note 2: For registered owner see section 6.
In Pioneer Computers Australia Pty Ltd v Pioneer KK[3] Bennett J made the following observations concerning the Registrar’s discretion:
[3] [2009] FCA 135; (2009) 176 FCR 300; (2009) 80 IPR 38; [2009] AIPC 92-354
[167] The discretion under s 101(3) is a broad discretion to decide not to remove a trade mark from the Register or not to carve out some of the goods and services for which the mark is registered, even if s 92 grounds have been made out, if the Court is satisfied that it is reasonable to do so. Irrespective of the lack of use of the trade marks on the removal goods and the removal services in the relevant period, there is a discretion not to alter the registrations.
[168] In Kowa Company at [98], Lander J rejected the submission that a party seeking the exercise of the discretion needs to show “exceptional circumstances”. In E & J Gallo at [198], Flick J agreed with Lander J that there is no requirement to establish exceptional circumstances. With respect, I also agree with Lander J that there is no warrant to read a requirement for exceptional circumstances into s 101(3).
[…]
[171] By amendment in 2006, s 101(4) was added to provide that without limiting the matters that the Registrar may take into account in deciding under s 101(3) not to remove a trade mark from the Register, the Registrar may take into account whether the trade mark has been used by the registered proprietor in respect of (a) similar goods or closely related services; or (b) similar services or closely related goods. The parties disagree as to whether or not the matters now raised in s 101(4) are able to be taken into account for the purposes of the unamended section; that is, whether it was necessary to insert s 101(4) to add discretionary factors not previously available, or to clarify that they were always available to be taken into account.
There is no limitation within s 101(3) on the discretion, nor any indication of the factors to be taken into account. In the Explanatory Memorandum to the Trade Marks Amendment Bill 2006 (Cth) by which s 101(4) was introduced, it is stated that ‘[c]urrently, it is not clear that the Registrar is able to take use on closely related goods or services into account, when deciding whether to exercise his or her discretion not to remove a trade mark from the Register’ and that the amendment was for the purposes of clarifying the Registrar’s discretion.
Evidence
Evidence in Support
Declaration of Rodney Cyril Sacks dated 14 October 2019 with Exhibits RCS-1 to RCS-35 (Sacks), including at RCS-6 the Statutory Declaration of Elizabeth Bromage with Exhibits EB-1 to EB-9 (Bromage)
Declaration by Elizabeth Kate Godfrey dated 10 October 2019, together with exhibits EKG-1 to EKG-21.
Discussion
To defeat the non-use application, the opponent must demonstrate that it has used the Trade Mark on the goods covered by the registration within the period of three years ending one month before the day on which the non-use application was filed (‘the relevant period’). The evidentiary standard is the ‘balance of probabilities’ which means that I must be satisfied the opponent more likely than not used the Trade Mark during the relevant period. This arises by virtue of section 100(1)(c) of the Act.
The main arguments advanced by the non-use applicant in this case are that:
The opponent has not used the Trade Mark on the registered goods during the relevant period;
The Coca-Cola Company (‘the opponent’s predecessor’) launched a range of energy drinks under the brand MOTHER in about 2007 and it is this mark “MOTHER” solus and not the Trade Mark which is the subject both of the majority of the evidence and of the submissions made by the opponent; and
There is very little use of the Trade Mark demonstrated in the evidence and it is limited to a single marketing campaign which took place in 2010/2011 which is outside the relevant period.
The opponent refutes these arguments and I turn to its evidence. The Sacks declaration states that the opponent became the owner of the Trade Mark by assignment from the opponent’s predecessor on 12 June 2015, of a portfolio of MOTHER and MOTHER-derivative trade marks used and registered in Australia in relation to energy drinks and associated goods/services.
Mr Sacks explains that the Trade Mark “MOTHERLAND” was one of the first MOTHER-formative marks adopted by its predecessor in 2007[4]. The Trade Mark was subsequently prominently used in advertising campaigns in 2010 and 2011. This included exposure:
· on national television and in cinemas[5];
· in advertisements, promotional articles and promotional events in popular magazines, such as Zoo Weekly[6];
· in radio advertisements[7];
· on point-of-sale materials[8];
· on vending machines[9];
· in advertisements on popular Internet sites[10]; and
· On its Facebook page dated 27 August 2010 and 31 August 2010[11]
[4]Exhibit RCS-5 accompanying Sacks
[5] Exhibit RCS-17 accompanying Sacks
[6] Exhibit RCS-19 accompanying Sacks
[7] Exhibit RCS-20 accompanying Sacks
[8] Exhibit RCS-21 accompanying Sacks
[9] Exhibit RCS-15 accompanying Sacks
[10] Exhibit RCS-22 accompanying Sacks
[11] Paragraph 37 of Sacks
Ms Siobhan Ryan, counsel for the opponent, has argued that the opponent’s evidence demonstrates use of the Trade Mark in content posted on the opponent’s dedicated “Mother Energy” Facebook and YouTube pages and on its advertiser, Triple MMM’s YouTube page dated 7 April 2011[12] prior to the relevant period and that these advertisements were accessible to view and retrieve in 2019 and are still accessible at the time of the hearing. Ms Ryan says it can be inferred that the content was likewise accessible throughout the Relevant Period, as indicated by comments posted within the last two years.
[12] Paragraph 37 of Sacks
Ms Ryan referred me to the case of PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd (‘PDP Capital’)[13] where the non-use period was September 2015 to September 2018. The subject trade mark was registered for dipping sauces and other shelf-stable goods. The trade mark owner asserted that the mark was in use until phased out in early 2016. Despite new branding, some sellers of the WICKED products continue to use images of the old packaging on their websites. Markowitz J accepted a screenshot dated 27 May 2019 from such a wholesaler’s website as evidence of use during the non-use period. Her Honour noted that despite what appeared on the wholesaler’s website, the product supplied by it “currently and for some years prior” bore the new version of the trade mark[14].
[13] [2020] FCA 1078
[14] PDP Capital Pty Ltd v Grasshopper Ventures Pty Ltd [2020] FCA 1078 at [574] – [581].
In support of Ms Ryan’s comments I turn to consider the evidence. The evidence establishes that the Trade Mark was initially used in a large single marketing campaign by the opponent’s predecessor in 2010 and 2011 because there are a number of exampled of dated use of the Trade Mark in the opponent’s evidence. Unfortunately, I note that any evidence of use of the Trade Mark during the relevant period is severely limited (and arguably there is none at all) and the bulk of the opponent’s evidence is in relation to its MOTHER solus trade mark and not particularly helpful in establishing use of the Trade Mark during the relevant period.
In considering the use of the Trade Mark, it is clear that a YouTube advertisement video was uploaded in 2011, however, is this use of the Trade Mark because the advertisement video could potentially be accessed by consumers during the relevant period? I do not believe it is.
I am satisfied that, taken at its best, this evidence of the YouTube video is an example of a passive historical snapshot of a marketing campaign that the opponent was no longer actively promoting or using to sell its goods to Australian consumers. It is because of this that the current case is not analogous to PDP Capital. Unlike PDP Capital, no Australian consumer has been able to purchase an energy drink branded with the Trade Mark during the relevant period, nor has the opponent offered for sale any goods bearing the Trade Mark during the relevant period. The marketing campaign which featured the Trade Mark had come to an end in 2010 with a brief mention in 2011. While a consumer may be able to stumble across the YouTube advertisement, this is not sufficient to demonstrate genuine commercial use of its Trade Mark in relation to any of the registered goods within the relevant period, in accordance with the test in Imperial Group Ltd v Philip Morris & CoLtd[15]. I am not satisfied that the opponent has demonstrated genuine commercial use of the Trade Mark in relation to its goods during the relevant period.
[15] [1982] FSR 72
Registrar’s Discretion
There is a discretion embodied in subsection 101(3) of the Act.
(3) If satisfied that it is reasonable to do so, the Registrar or the court may decide that the trade mark should not be removed from the Register even if the grounds on which the application was made have been established.
The application for removal is for all of the registered goods. The opponent has requested the Registrar’s discretion to allow the Trade Mark to remain registered for all those goods because:
(a)The Trade Mark has been continuously used since 2010; and
(b)The removal of the Trade Mark would cause confusion in the marketplace if others were to use it on their own goods/services due to the opponent’s significant reputation in its MOTHER trade mark.
In order to better explain the opponent’s argument for the exercise of the Registrar’s discretion I turn to the opponent’s evidence. According to Mr Sacks, the history of the MOTHER range of energy drinks begins when the MOTHER solus trade mark was coined in 2006 as an abbreviation of the expression "mother nature" with a play on the idea that the beverage contained energy which "harnessed the power and energy of nature".
In 2006 the opponent’s predecessor obtained registration in Australia, of several trade marks that included the word MOTHER in connection with non-alcoholic beverages in class 32. It then commenced with a significant launch of MOTHER energy drink in January 2007. The launch included the MOTHERLAND newsletter, which promoted the MOTHER energy drink[16]. From 2008 onward, the opponent’s predecessor obtained registration in Australia of further MOTHER and MOTHER-formative trade marks, including the Trade Mark on 11 February 2010.
[16] Exhibit RCS-4 accompanying Sacks
Mr Sacks states that before, during and since the relevant period, the opponent and the opponent’s predecessor sold hundreds of millions of cans of MOTHER energy drink in Australia, generating substantial revenue[17]. All of these cans have prominently featured the MOTHER trade mark[18]. According to Godfrey and Sacks, the distribution network of the opponent’s MOTHER branded goods is very significant and includes retail chains, independent stores, food courts, vending machines, liquor stores and petrol stations to name a few[19]. It is against this background of significant reputation in its MOTHER trade mark that the opponent bases its arguments for exercising the Registrar’s discretion.
[17] Confidential Exhibit RCS-14 accompanying Sacks
[18] Exhibits RCS-3, RCS-7, RCS-18, RCS-21 and RCS-24
[19] Exhibit EKG-17 accompanying Godfry
Ms Ryan had submitted that the opponent’s MOTHER trade mark enjoys a very substantial and exclusive reputation in respect of energy drinks. She went on to state that the opponent’s evidence shows that:
a) the MOTHER mark is frequently coupled with secondary words or taglines and that it follows that consumers understand that the Trade Mark is related to the MOTHER trade marks of the opponent;
b) the MOTHER mark is used in relation to a variety of flavours within Energy Beverages’ range;
c) consumers are used to seeing the MOTHER mark in brand extensions and cross -promotions;
d) there is convergence of energy drinks with other non-alcoholic drinks through distribution channels and retail outlets.
Ms Ryan stressed that MOTHER is a highly distinctive term in the context of beverages and that the use of a similar “MOTHER …” mark by a hypothetical third party in relation to energy drinks or the other goods covered by the registration would be likely to deceive or cause confusion . She states:
It is not laudatory. It is not fancy. It is an unusual and unexpected name in the context of beverages of any kind and in particular, of energy drinks and other “grab & go” drinks, such as sports drinks, soft-drinks and flavoured and aerated waters and fruit juices
The non-use applicant has correctly pointed out that the difficulty with this argument is that, if accepted, it would permit the opponent to maintain a registration for any trade mark including the word MOTHER in relation to any beverage. Mr Lang, counsel for the non-use applicant, has stated the reputation in relation to MOTHER does not justify that result, because it is a reputation which is specific in nature. Delegate Nicholas Barbey, faced with substantially the same argument in relation to the mark MOTHER LOADED ICE COFFEE in Energy Beverages LLC v Cantarella Bros Pty Limited[20], rejected it. In particular, he did so because the reputation of MOTHER is specific in two respects. First, it is specific in relation to the mark which has been used. Secondly, it is specific in relation to the goods for which it has been used. The same applies in this case. The opponent’s evidence establishes that the MOTHER logo is only used on energy drinks as a discrete, standalone element, in a distinctive gothic font. This is where the opponent’s very significant reputation lies.
[20] [2019] ATMO 140
Mr Lang argued:
…the evidence establishes that, to the extent that there is any ongoing use of other components with the word MOTHER, it is limited to descriptors such as “lemon bite”, “frosty berry” and the like, which describe particular products within the range of energy beverages. MOTHERLAND does not fit into this category. It is a single word with its own meaning (“the country in which you were born”) and certainly does not denote a flavour variant. Accordingly, Energy Beverages’ reputation in the mark MOTHER naturally justifies its retention of the MOTHER mark, but does not justify the retention of the registration of mark MOTHERLAND, which has not been used for more than 9 years, and which Energy Beverages has no concrete intention to use.
I am in agreement with the non-use applicant. The evidence establishes that the opponent has not used the Trade Mark in nine years and there is insufficient evidence to establish that there is any residual reputation in the Trade Mark from a single marketing campaign that has not been revived in 9 years. The opponent has finally argued that its private interests in maintaining the Trade Mark on the register may be taken into consideration when determining whether or not to exercise the Registrar’s discretion. Ms Ryan states:
Energy Beverages has opposed the removal application and provided extensive evidence of its interests in the trade mark MOTHER and MOTHER derivatives in Australia. The MOTHERLAND campaign was a memorable and celebrated campaign which remains relevant to the MOTHER brand and could easily be revived or re-imagined.
But I am not persuaded by this argument. The purpose of section 92 of the Act is to facilitate the removal of an unused trade mark and the public interest in the integrity of the Register will generally demand the removal of an unused trade mark. Accordingly, the Registrar’s discretion should not be exercised liberally and the opponent bears the onus of satisfying the Registrar that the discretion should be exercised in its favour. I am not satisfied by the evidence before me that it is reasonable to exercise that discretion.
Decision
I find the opponent has not rebutted the allegation of non-use. I direct trade mark registration 1345404 be removed from the register in respect of all the goods to which the registration applies, one month from the date of this decision. In the event of an appeal, I direction that the trade mark will not be removed until the appeal has been discontinued or, in the event of a decision from the Court, that the trade mark be subject to that order.
Costs
It is usual for costs to follow the event, and I see no reason to depart from that principle here. I award costs against the opponent as allowed by Schedule 8 of the Regulations.
Bianca Irgang
Hearing Officer
Trade Marks Hearings
21 December 2020
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