Opposition by Energy Beverages LLC to registration of trade mark application 1989429 (5, 29, 30, 31, 32) – KANGAROO MOTHER – in the name of Kangaroo Mother Australia Pty Ltd
[2021] ATMO 62
•5 July 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReOpposition by Energy Beverages LLC to registration of trade mark application 1989429 (5, 29, 30, 31, 32) – KANGAROO MOTHER – in the name of Kangaroo Mother Australia Pty Ltd
Delegate: Robert Wilson
Representation: Opponent: Siobhan Ryan of Counsel, instructed by Davies Collison Cave Pty Ltd
Applicant: Written submissions only by Spruson & Ferguson
Decision: 2021 ATMO 62
Trade Marks Act 1995 (Cth) - Section 52 opposition: ss 42(b), 44 and 60 considered – no ground of opposition established – trade mark to proceed to registration
Background
This decision concerns an opposition to registration of the trade mark the subject of the application detailed below. Energy Beverages LLC (‘the Opponent’) opposed registration pursuant to s 52 of the Trade Marks Act 1995. Registration was applied for by Kangaroo Mother Australia Pty Ltd (‘the Applicant’).
Application Number:
1989429
Filing Date:
15 February 2019
Specification:
The full specification (‘the Applicant’s Goods’) appears in an annexure to this decision. Some indicative goods are provided below.
Class 5: (including) Pharmaceutical, medicinal and therapeutic preparations; vitamins, minerals and food supplements including protein supplements; dietetic beverages adapted for medical purposes
Class 29: (including) Dairy products; milk; milk-based beverages; milk products; milk-based beverages flavoured with coffee, cocoa, chocolate or tea
Class 30: (including) Breakfast cereal; cereal preparations; tea; tea-based beverages; tea substitutes; artificial tea; cocoa; cocoa-based beverages; chocolate-based beverages; cocoa substitutes; artificial cocoa; chocolate-based beverages
Class 31: (including) Agricultural, horticultural and forestry products not included in other classes
Class 32: (including) Mineral and aerated waters; non-alcoholic drinks
Trade Mark:
KANGAROO MOTHER
(‘the Applicant’s Trade Mark’)
Any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) or the Trade Marks Regulations 1995 (Cth), respectively, unless otherwise indicated.
Following advertisement in the Australian Official Journal of Trade Marks of the acceptance of the application, the Opponent filed a Notice of Intention to Oppose registration. A Statement of Grounds and Particulars followed (‘the SGP’). The SGP nominated grounds of opposition under ss 42(b), 44, 60 and 62A. The Applicant subsequently filed a Notice of Intention to Defend.
Evidence
The Opponent filed Evidence in Support of its opposition, being:
·Declaration made on 25 June 2020 by Samuel Peter Thiele, the Vice President - Oceania of the Opponent, with Exhibit SPT-1 (‘the Thiele declaration’). Exhibit SPT-1 is divided into Tabs 1 to 62;
·Declaration made on 22 June 2020 by Elizabeth Kate Godfrey, a Principal of Davies Collison Cave, the legal representative of the Opponent, with Exhibits EKG-1 to EKG-11; and
·Declaration made on 23 June 2020 by Emily Elizabeth Maartensz, a lawyer employed by Davies Collison Cave Law Pty, a law firm associated with Davies Collison Cave, with Exhibits EEM-1 to EEM-178.
The Applicant did not file Evidence in Answer.
Nature of Hearing
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. The Opponent requested an oral hearing. The Applicant requested to be heard by way of written submissions. It has fallen to me, as a delegate of the Registrar of Trade Marks to decide the matter.
I heard the Opponent’s oral submissions on 19 April 2021. Siobhan Ryan of Counsel, who was instructed by Davies Collison Cave, appeared on behalf of the Opponent. Ms Ryan’s oral submissions were supplemented by written submissions which were filed prior to the hearing. The Applicant’s written submissions, which were also filed prior to the hearing, were prepared by its representative Spruson & Ferguson.
The Opponent
It is declared in the Thiele declaration that Energy Beverages Australia Pty Ltd (‘EBAU’) is a wholly owned subsidiary of the Opponent. The Opponent is a subsidiary of Monster Beverages Corporation (‘MBC’) ‘whose shares are listed on the Nasdaq Stock Market’. Monster Energy AU Pty Ltd (‘Monster AU’) is a wholly owned subsidiary of Monster Energy Company (‘MEC’). MEC is also a subsidiary MBC. Mr Thiele is the Vice President – Oceania of both EBAU and Monster AU. In his declaration Mr Thiele referred to Monster AU and MEC, collectively, as ‘Monster’.
Mr Thiele declared:
In May 2013, I commenced in the role of Country Manager, Oceania at Monster. At the time I commenced my role with Monster, one of the competing products in the Australian energy drink market was the MOTHER range of energy drinks, which was at the time owned by The Coca-Cola Company (TCCC). In June 2015, TCCC transferred its portfolio of trade marks in Australia associated with the MOTHER line of energy drinks as well as the business and goodwill pertaining to those trade marks to [MBC], which were then transferred to [the Opponent] (‘the MOTHER brand acquisition’). …
As a result of the MOTHER brand acquisition, in around June 2015 [the Opponent] became the owner of various trade marks containing the word MOTHER in Australia.
The Opponent is recorded as the owner of a number of registered or applied for trade marks, including those listed below (‘the Opponent’s Trade Marks‘):
Trade Mark Numbers
Trade Mark
Classes
Priority Date
1230388
MOTHER
32
17 Mar 2008
1247244
32
17 Jun 2008
1320799
5, 32
14 Sep 2009
1345404
MOTHERLAND
32
11 Feb 2010
1364858
MOTHER
33
1 Jun 2010
1408011
MOTHER LOADED ICED COFFEE
29, 30
8 Feb 2011
1447700
MOTHER OF AN ENERGY HIT
32
8 Sep 2011
1473750
MOTHER MAIDENS
32
8 Feb 2012
1578423
MOTHER GREEN STORM
32
4 Sep 2013
1601749
32
20 Jan 2014
1817752
32
23 Dec 2016
1956360
MOTHER ALWAYS ON
32
19 Sep 2018
1935640
MOTHER LOADED ICED COFFEE
29, 30
21 Jun 2018
The Applicant
There is nothing before me from which I might provide a background of the Applicant. Nevertheless, the Applicant is the owner of the following registered trade marks (‘the Kangaroo Mother Registrations’):
Registration Numbers
Trade Mark
Classes
Priority Date
1871805
3, 5, 21
12 Sep 2017
1944722
KANGAROO MOTHER
3, 5, 21
7 Aug 2018
Pre-hearing amendment of specification
On 24 August 2020, some eight months prior to the hearing, the Applicant requested an amendment to the specification of goods and services which appeared in the application as filed. The Applicant’s submissions indicate that the amendment was requested ‘without admission’. In line with the request for amendment, the following goods were deleted from the specification:
·Coffee; coffee based beverages; coffee substitutes and artificial coffee in Class 30; and
·Energy drinks; protein enriched sports drinks; sports drinks and sports drinks containing electrolytes in Class 32.
The Applicant’s Goods reflects the specification as amended.
Grounds of Opposition, Onus and Standard of Proof
As indicated above, in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 60 and 62A. At the hearing the Opponent pressed only the grounds under ss 42(b), 44 and 60. The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard, being ‘on the balance of probabilities’.[2] The date at which the rights of the parties are to be determined is 15 February 2019, being the filing date of the application (‘the Relevant Date’).[3] The Relevant Date is also the priority date for the purposes of ss 44 and 60. To succeed the Opponent need establish only one ground of opposition.
Discussion
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Telstra Corporation Limited v Phone Directories Company Ltd [2015] FCAFC 156, [132]-[133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82, [2].
Section 44
Relevant provisions of s 44 are reproduced below:
Section 44 - 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.
(2)…
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant's trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant's trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note: For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant's trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i) the similar goods or closely related services; or
(ii) the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant's trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1: An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2: For predecessor in title see section 6.
Note 3: For priority date see section 12.Section 10 - Definition of deceptively similar
For the purposes of this 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.
In the SGP the Opponent nominated the Opponent’s Trade Marks to support its s 44 ground of opposition. To successfully oppose the applications pursuant to s 44, the Opponent must establish that at least one of the Opponent’s Trade Marks:
· has a priority date which is earlier than the Relevant Date (‘the first requirement’);
· is registered in respect of at least some goods which are similar to at least some of the Applicant’s Goods (‘the second requirement’); and
· is substantially identical with or deceptively similar to the Applicant’s Trade Mark (‘the third requirement’).
Of particular interest in this matter is the Opponent’s MOTHER solus word trade mark (‘the Opponent’s Mother Mark’), which is the subject of registrations 1230388 and 1364858. Those registrations cover the following goods (‘the Mother Goods’):
1230388 - 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
1364858 - Class 33: Alcoholic beverages (except beers); distilled spirits; liqueurs; wines; wine based alcoholic beverages; spirit based alcoholic beverages
The Opponent’s Mother Mark is of particular interest because if it is not found to be deceptively similar to the Applicant’s Trade Mark neither will the remainder of the Opponent’s Trade Marks be deceptively similar. This is so because the elements which are additional to ‘MOTHER’ in the remaining trade marks serve only to add further points of difference.
The first requirement
Each of the two registrations of the Opponent’s Mother Mark has a priority date which is earlier than the Relevant Date, thus satisfying the first requirement.
The second requirement
The Opponent’s Mother Mark is registered for goods which include non-alcoholic beverages in Class 32. That is a broad term which encompasses, and is therefore similar to, the various claims for non-alcoholic beverages which the Applicant has claimed in the same class. Other goods that fall within the Mother Goods may be similar to other of the Applicant’s Goods (such as the cocoa-based beverages in Class 30); however; as will be seen, it is not necessary that a detailed comparison of all of the Mother Goods is made with all of the Applicant’s Goods. The second requirement is satisfied in respect of the Opponent’s Mother Mark.
The third requirement
Substantially identical?
The Opponent has not pressed that any of the Opponent’s Trade Marks is substantially identical to the Applicant’s Trade Mark; consequently, I see no need to consider substantial identity further.
Deceptively Similar?
Guidance for determining whether trade marks are deceptively similar is generally found in the judgment of Windeyer J in Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd:
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].[4]
[4] [1963] HCA 66, [13].
Further guidance is to be found in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd, wherein Jacobson J stated:
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgement of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers.[5]
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark.[6]
Third, allowance must be made for imperfect recollection.[7]
Fourth, the effect of the spoken description must be considered.[8]
Fifth, it is necessary to show a real tangible danger of deception or confusion.[9]
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source.[10] …
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services.[11]
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained.[12]
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words.[13] However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different.[14] [15]
[5] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.
[6] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66, 415 (Windeyer J).
[7] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [74].
[8] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [49]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [75]; Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51, 658.
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [43], [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [76]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594–5.
[10] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[11] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [86]–[89]; Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
[12] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020, [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43, 632 (Mason J).
[13] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196, [79].
[14] Ibid [100].
[15] [2012] FCA 1022, [37]–[46].
The Opponent submitted that MOTHER is ‘a highly distinctive term in the context of non-alcoholic beverages … It is not laudatory. It is not fanciful. It is unusual and an unexpected name for a drink or supplement’. The Applicant disputed the ‘highly distinctive’ nature of MOTHER and submitted to the contrary that ‘the element MOTHER has a readily understood connotation of nurturing and care which is relevant to these goods’. I am inclined to the Opponent’s view in this regard and consider MOTHER to be highly distinctive in respect of, at least, the Mother Goods; however, simply because MOTHER appears as an element in the Applicant’s Trade Mark does not, of itself, mean that the Applicant’s Trade Mark is deceptively similar to the Opponent’s Mother Mark—other factors must be considered.
It may be that when taken as a whole the Applicant’s Trade Mark is sufficiently visually, phonetically, and conceptually different to MOTHER solus that deception or confusion are unlikely. On this point the Applicant submitted:
Although the element MOTHER is common to the KANGAROO MOTHER Trade Mark … we refute the submission that this is the ‘dominant and essential feature’ of the KANGAROO MOTHER Trade Mark. The element KANGAROO is instead ‘dominant’ as this is the first and foremost word in the KANGAROO MOTHER Trade Mark and therefore ‘far the most important for the purposes of distinction’ in our submission.[16] This otherwise largely informs the idea or ‘impression produced in the minds of potential consumers’ on encountering the KANGAROO MOTHER Trade Mark[17] given the extent to which the element KANGAROO is distinctive in the context of the range of [the Applicant’s Goods].
To support that submission the Applicant pointed to more than 70 registrations that co-exist with the Opponent’s Mother Mark. Those registrations are of highly varying degrees of relevance. Some of the more instructive are listed below.
[16] The Applicant cited London Lubricants (1920) Limited’s Application (1924) 42 RPC 264, 279 to support this submission.
[17] The Applicant cited Australian Woollen Mills v F S Walton & Co Ltd (1937) 58 CLR 641, 658.
Trade Mark
Goods (including)
MOTHER’S CHOICE
Class 30: Substances used as food or as ingredients in food
MOTHER EARTH
Class 30: All goods in this class
Class 30: Coffee, tea
EARTH MOTHER
Class 30: Beverages in this class including chocolate-based beverages
Mother-in Law
Class 33: Wine
mothers milk
Class 33: Wine
Class 33: Wine
Mothers Little Helper
Class 33: Wine
wolfmother
Class 33: Wine
KANGAROO MOTHER
Class 5: Milk-based beverages
In any consideration of co-existing trade marks care must be exercised by a decision maker not to be wrongly influenced. This is so, not least because marks in the past may have been wrongly registered and any such errors should not persist even in the light of the desirability of consistency.[18] With that in mind, it is apparent that in some of the examples above MOTHER is such an integral part of an expression which is sufficiently different conceptually, visually and phonetically to MOTHER solus that deception or confusion are unlikely: MOTHER EARTH is a good example. Other examples in the list above are less clear cut such as MOTHER’S KITCHEN. Of particular interest in the list are WOLFMOTHER and the Applicant’s own existing registration for KANGAROO MOTHER. These warrant further discussion.
[18] Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579, 590 (Wilcox J).
There are significant visual and aural differences between WOLFMOTHER and simply MOTHER. There is also a significant conceptual difference. While both evoke the idea of a female parent, WOLFMOTHER conjures up images of a wild animal whereas MOTHER evokes images of a human mother. While both are ‘mothers’ they are otherwise conceptually quite different. A similar analysis can be made in respect of KANGAROO MOTHER.
The Opponent has submitted that in considering whether MOTHER is deceptively similar to KANGAROO MOTHER, account should be taken of the potential for the Applicant to render its trade mark ‘in a style, font or colour scheme the same or similar to that used by the Opponent for its MOTHER brand’. While it is so that a registration for a plain word trade mark (in the absence of a relevant endorsement) does not restrict the manner in which the trade mark may be rendered, there is a limit to how far account of this can be taken when considering deceptive similarity. Jessup J stated relevantly:
In addressing the question referred to in the authorities, I am not permitted to assume that the applicant’s mark will be used in any particular style, colour or get-up … Much of the respondent’s case was concerned to demonstrate how confusing the applicant’s mark would be if used in the same lettering and font, in the same colour and against the same background colour, and in the same layout and style, including the same placement and angle with reference to the packaging being used, as the respondent’s mark commonly is. Considerations of these kinds would, of course, be central aspects of any passing off case brought by the respondent against the applicant, but they have no place in a proceeding in which the only issue is whether the applicant’s mark, a single word in upper case letters, should be registered.[19]
[19] Delfi Chocolate Manufacturing SA v Mars Australia Pty Ltd [2015] FCA 1065, [11] (citations omitted).
In a similar vein, the Opponent submitted that it would be open for the Applicant to render their trade mark as ‘kangaroo MOTHER’ with MOTHER as the prominent feature, ‘Or be heard or read as such by consumers’. Following Jessop J, such specific renderings of the Applicant’s trade mark ought not to be considered when determining deceptive similarity. That KANGAROO MOTHER when spoken with a natural rendering would somehow be heard with a significant and unnatural stress on the second word seems extremely unlikely.
The Opponent submitted, also, that the ‘KANGAROO’ element is likely to be seen not as part of the conceptual meaning discussed above, but as a descriptor indicating that the goods have some connection with Australia; this was asserted to arise out of the symbolism of a kangaroo being representative of Australia. I am not persuaded by that submission. The natural and most likely interpretation of the Applicant’s Trade Mark, when taken as a whole, is as a reference to an animal. Any symbolism that there might be in the word ‘kangaroo’ would be overwhelmed by that obvious reading.
Taking into to account the factors discussed above, I am not satisfied that the Opponent’s Mother Mark is deceptively similar to the Applicant’s Trade Mark. By extension, neither are the remainder of the Opponent’s Trade Marks deceptively similar. Consequently, the Opponent has failed to establish this ground of opposition.
Section 60
The ground based on s 60 is particularised (in part) in the SGP as follows:
As a result of the Opponent’s extensive reputation in Australia (as a result of significant exposure and/or use of one or more of [the Opponent’s Trade Marks] in Australia since as early as 2007) in [the Opponent’s Trade Marks], consumers are likely to be deceived or confused into believing that the goods offered and provided under [the Applicant’s Trade Mark] are the Opponent’s goods, somehow associated or affiliated with the Opponent or endorsed by or sponsored by the Opponent, when that is not the case.
Section 60 is reproduced below:
Section 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.
To establish this ground of opposition the Opponent must demonstrate that at the Relevant Date there was another trade mark which had acquired a reputation in Australia amongst a significant number of persons in the relevant market such that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The Opponent has stated that ‘one or more’ of the Opponent’s Trade Marks has such a reputation.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided decided that, in s 60, reputation is ‘the recognition of the [trade mark] by the public generally’.[20] Her Honour quoted with approval the following words of Lockhart J from Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[21]
[20] [2000] FCA 1335, [81].
[21] [1992] FCA 159, [118].
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[22]
[22] Jackson International Trading Co Kurt D Bruhl GMbH & Co KGv Hugo Boss AG [1999] ATMO 23 (Thompson).
Consideration of reputation
It is clear from the evidence that the Opponent’s principal business is the sale of prepacked single serve, takeaway, cans of what are commonly called ‘energy drinks’. The market for such beverages in Australia is huge and sales of the Opponent’s MOTHER branded goods reflect this. It is declared in the Thiele declaration that from 2007 to the Relevant Date ‘hundreds of millions of cans of MOTHER energy drink have been sold in Australia’. This assertion is not disputed by the Applicant. It is also submitted in the Thiele declaration that, ‘The cans of energy drink sold in Australia have prominently featured the trade mark MOTHER.’. The evidence shows, almost entirely, use of MOTHER on cans and in advertising materials in the stylised font which appears on the cans shown below. There are some important exceptions to this which are discussed below.
There is some relatively minor evidence of use of MOTHER in plain script but that is usually as an element of a combination of words—most often as part of MOTHER ENERGY DRINK, but at other times it appears as part of a slogan such as MOTHER OF AN ENERGY HIT or MOTHER OF A FESTIVAL.
The Applicant submitted:
[If the Opponent] has acquired reputation in [its] MOTHER Trade Marks in Australia that this is limited as follows:
(a)to the element MOTHER in the gothic stylised for shown throughout Thiele; and
(b)to ‘energy beverages’ (as the primary product offered by [the Opponent] shown in Thiele with any variants retaining their identity as energy beverages.
I am satisfied that MOTHER, as rendered in the Gothic style of script as depicted on the cans in the examples shown above, acquired a reputation before the Relevant Date. That reputation being confined to energy drinks. I will now consider whether the acquired reputation is limited to MOTHER rendered in the Gothic Style or extends to other renderings of MOTHER.
Section 17 defines a trade mark as ‘a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person’. A sign is defined in s 6 as including a word and a sound. The definition of sign does not restrict a ‘word’ to a written word. In considering the question of deception or confusion Dixon and McTiernan JJ noted that, amongst other things, ‘The effect of spoken description must be considered’.[23] Further, trade marks which are written words, or have words as elements, are frequently rendered verbally by their owners in the course of trade. Common examples of this are television and radio advertising campaigns. It is declared in the Thiele declaration that, ‘The Mother brand … has been the subject of substantial and continuous advertising, marketing and promotion’ and I am satisfied that this is the case. The declaration includes examples of both television and radio advertisements. MOTHER is rendered verbally in the examples. I am satisfied that in addition to the Gothic style script rendering of MOTHER, the verbal rendering of the word also acquired a reputation before the Relevant Date. This reputation is also confined to energy drinks.
[23] Ibid 658.
Consideration of deception and confusion
It is not sufficient that the Opponent merely establish that its trade mark has acquired a reputation, I must also be satisfied that because of that reputation use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. Discussions and decisions on the subjects of deception and confusion are legion and a good number provide relevant comments in relation to a consideration of deception and confusion for the purposes of s 60. In a case concerning infringement and passing off, Australian Woollen Mills Limited v F S Walton and Company Limited, Dixon and McTiernan JJ said the following:
An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. … The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected. Potential buyers of goods are not to be credited with any high perception or habitual caution. On the other hand, exceptional carelessness or stupidity may be disregarded. The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observations of men considered in the mass affords the standard.[24]
[24] (1937) 58 CLR 641, 658.
The concepts of ‘deceive’ and ‘confuse’ were explained in the New Zealand case of Pioneer Hi-Bred Corn Co v Hyline Chicks Pty Ltd, where Richardson J said:
‘Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public. Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case. [25]
[25] [1979] RPC 410, 423 (citations omitted).
It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived.[26]
[26] (1997) 38 IPR 495, 501(citations omitted). His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act.
In Registrar of Trade Marks v Woolworths Ltd French J highlighted the following further matters concerning confusion:
A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt. It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.
In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.[27]
[27] [1999] FCA 1020, [50]. These considerations by French J are a restatement of the principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
I found, above, that MOTHER rendered in a Gothic style script and MOTHER rendered verbally both acquired a reputation before the Relevant Date. A similar situation exists here as existed in the s 44 comparison. It is necessary only that I consider whether deception or confusion would arise because of the reputation of MOTHER rendered verbally because it is more likely that deception or confusion will arise because of that reputation than because of the reputation of the Gothic rendering. This is so because the stylisation of the Gothic rendering means deception or confusion are less likely vis‑à‑vis the verbal rendering.
There is an inextricable link between spoken language and the written word. In human history, spoken language preceded written language—just as spoken language largely precedes written language in a child. Written language arose as a way of recording spoken language. Because of this inextricable link, the spoken word and the written word are essentially interchangeable for literate persons. It is fair to say that in Australia almost the entire population is literate. Where there are homophones of spoken words care must be taken that the correct written word is adopted but that seems not be a factor here. Because of the foregoing it reasonable to make the assessment of deception or confusion on the basis that it is the plain written word MOTHER which has acquired the reputation.
The plain word MOTHER and the Applicant’s Trade Mark were compared under the s 44 discussion, above, and found not to be deceptively similar: that is, the Applicant’s Trade Mark was found to not so nearly resemble the plain word MOTHER that it is likely to deceive or cause confusion. The acquisition of a reputation by the plain word MOTHER does not in the circumstances of this case mean that deception or confusion is more likely than if MOTHER had not acquired a reputation. If anything, the significant reputation acquired by MOTHER has lessened the likelihood of deception or confusion. MOTHER solus has such a strong reputation as being associated with the Opponent’s energy drinks that it is unlikely that a significant number of persons would consider that energy drinks bearing the notably different KANGAROO MOTHER trade mark would be caused to wonder whether, or deceived into thinking that, the energy drinks so marked came from the same trade source as the Opponent’s energy drinks.
The Opponent has not established that because of the reputation acquired by ‘one or more of [the Opponent’s Trade Marks]’ that use of the Applicant’s Trade Mark would be likely to deceive or cause confusion. The Opponent has, therefore, failed to establish this ground of opposition.
Section 42(b)
Section 42 is reproduced below:
42 Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a) …
(b) its use would be contrary to law.
The onus is on the Opponent to establish that use of the Applicant’s Trade Mark would be, rather than could be, contrary to law on the balance of probabilities.[28] The relevant time for assessing whether the use of the Applicant’s Trade Mark would be contrary to law is at the Relevant Date but ‘looking forward to prospective conduct after registration’.[29]
[28] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[29] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2003] FCA 1502 [42] (Wilcox J).
The particulars in the SGP for the ground of opposition pursuant to s 42 included the following:
Based on the reputation in MOTHER trade marks in Australia in relation to beverages, including energy drinks and related goods, including nutritional supplements, consumers are likely to be misled or deceived into believing that the goods offered and provided under [the Applicant’s Trade 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, 29, 30, 31 and 32 of the Opposed Mark under [the Applicant’s Trade 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 Applicant’s Trade Mark], when that is not the case. This conduct is in breach of section 29 of the Australian Consumer Law 2010 (Cth).
In the present matter the Opponent has failed to establish a ground of opposition under s 60. As the test for misleading or deceptive conduct under s 18 of the Australian Consumer Law (‘the ACL’) is a more stringent test than that for deception or confusion under s 60,[30] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to s 18 of the ACL.
[30] See, eg: Ownit Homes Pty Ltd v Ownit Conveyyancing Pty Ltd [2005] ATMO 47, [36]; Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191, 198 (Gibbs CJ).
Where a trade mark does not run afoul of s 18 of the ACL, neither will it run afoul of s 29 of the ACL. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered—in connection with the superseded Trade Practices Act1974 (‘TPA’)—that ‘the Court’s conclusion on s 52 would necessarily carry with it a conclusion on s 53(c) and (d)’.[31] Sections 53(c) and 53(d) of the TPA are the equivalent provisions to ss 29(1)(g) and 29(1)(h) of the ACL.
[31] [2003] FCA 104, [107].
For these reasons I am not satisfied that use of the Applicant’s Trade Mark would be contrary to law. Therefore, the Opponent has failed to establish this ground of opposition.
Decision
Section 55 relevantly provides:
55Decision
(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.
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Accordingly, the Applicant’s Trade Mark may proceed to registration after 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 a court so orders.
Costs
The Applicant has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. As the Opponent has failed to establish a ground of opposition, I award costs against the Opponent under s 221 in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.
Robert Wilson
Hearing Officer
Delegate of the Registrar of Trade Marks
5 July 2021Annexure
The Applicant’s Goods
Class 5: Pharmaceutical, medicinal and therapeutic preparations; vitamins, minerals and food supplements including protein supplements; dietetic beverages adapted for medical purposes; milk of almonds for pharmaceutical purposes; dietetic substances adapted for medical use; dietetic foods adapted for medical purposes; nutritional supplements; nutritional additives; nutritional cultures; casein dietary supplements; dietary fibre; enzyme preparations for medical purposes; enzyme dietary supplements; mineral food supplements; pharmaceutical preparations; lactose for pharmaceutical purposes; protein dietary supplements; vitamin preparations; dietetic and slimming foodstuffs, substances and preparations including beverages and preparations for making such beverages; medicinal herbs and herbal extracts; edible fish oils for medical purposes; marine oils being dietary supplements; marine oil for medical purposes; infants' and invalids' foods; infant formula; food for babies; powdered milk for babies; lacteal flour for babies; formulated meal replacements, formulated supplementary foods; protein bars in this class; vitamin enriched waters and beverages; medicated and vitamin or mineral enriched confectionery; medicinal teas; chlorophyll as a dietary supplement; sanitary preparations for medical purposes; medicated skin care preparations; plasters; materials for dressings; absorbent cotton; absorbent wadding; adhesive plaster; adhesive tapes for medical purposes; air deodorising preparations; air purifying preparations; algicides; animal washes; antiseptics; babies napkins and napkin pants (diapers and diaper pants) including disposable napkins (diapers); balms and lotions for medical purposes; bandages for dressings; therapeutic preparations for the bath; deodorants for clothing and textiles; compresses; deodorants other than for humans or animals; detergents for medical purposes; disinfectants for hygiene purposes; antibacterial soap; disinfectant soap; dog lotions for veterinary purposes; dog washes; remedies for foot perspiration; medicated toothpaste; preparations for use in the care of the mouth (medicated); fungicides; germicides; herbicides; napkins and pants for incontinents; insect repellents; insecticides; sanitary pads, napkins/pants, tampons and towels; parasiticides; pesticides; sticking plasters; preparations for destroying vermin
Class 29: Dairy products; milk; milk-based beverages; milk products; milk-based beverages flavoured with coffee, cocoa, chocolate or tea; milk-based food preparations with added vitamins and minerals; cheese; cottage cheese; cream cheese; butter; yoghurt; yoghurt spread; whey; dairy substitutes; cheese substitutes; non-dairy cheese; cottage cheese substitutes; non-dairy cottage cheese substitutes; cream cheese substitutes; non-dairy cream cheese substitutes; butter substitutes; non-dairy butter; yoghurt substitutes; non-dairy yoghurt; milk substitutes; non-dairy milk; soy-based beverages used as milk substitutes, including soy milk; nut milks including peanut milk, almond milk, cashew milk and coconut milk; rice milk; tofu; products made from tofu; preserved soy beans and products made from preserved soy beans; preserved, dried, frozen, processed and cooked fruits and vegetables; processed, dried, cooked and preserved vegetables, berries, nuts, fruits and seeds including in powdered form or as snack foods; vegetal, grain and dairy protein including rice protein and whey for human consumption; jellies, jams; compotes; eggs; edible oils and fats; coconut oil; meat, fish, seafood, poultry and game; meat extracts; meat substitutes; fish substitutes; poultry substitutes; game substitutes; meat extract substitutes; food spreads, namely, meat spreads and vegetable spreads; fruit spreads; peanut butter; nut butters; nut cheese; soy based spreads and dips; tahini; hummus; nut and seed spreads; processed nuts; prepared nuts; nut meats; nut extracts for food, not being food flavourings; roasted nuts; flavoured nuts; nut based foods containing cereal; eggs and egg products; tomato juice for cooking; tomato puree; juice for cooking; soup, bouillon, stock and broth and preparations for the foregoing; vegetable protein for use as an extender or meat substitute; textured vegetable protein for use as an extender or meat substitute; soy protein for use as a food additive; soy products in this class; soy-based snack foods; snacks prepared from meat, fish, seafood, poultry, game, fruit, vegetables, soy products, dairy products, nuts, meat substitutes, fish substitutes, seafood substitutes, poultry substitutes, game substitutes, dairy substitutes or in any combination of the foregoing; prepared meals consisting primarily of meat, fish, seafood, poultry, game, fruit, vegetables, soy products, dairy products, nuts, meat substitutes, fish substitutes, seafood substitutes, poultry substitutes, game substitutes, dairy substitutes or in any combination of the foregoing; burgers and hamburgers in this class; edible oils; edible fats; crystallised fruits; preserved lentils; preparations made from lentils; croquettes; prepared foodstuffs consisting of or made substantially of legumes; chlorophyll for human consumption
Class 30: Breakfast cereal; cereal preparations; cereal products; processed cereals; foods consisting predominantly of cereals; cereal based snacks; cereal extracts for food and for use as food flavourings; cereal based foods containing nuts; cereal-based beverages, being cereal-based foods; cereal-based food preparations with added vitamins and minerals in this class; cereal-based energy bars and snack foods; cornflakes; oat flakes; grain and grain products; flour; bread; breadcrumbs; pastry; biscuits; cookies; crackers; cakes; preparations for making cakes; yeast; yeast products; yeast extracts; yeast spreads; rice and rice products; rice cakes; rice-based snack foods; rice-based prepared meals; soy flour and sauce; soy-based products in this class; corn snacks; custard; gravy; malt extract for food; seasonings other than essential oils; flavourings other than essential oils; flavourings for beverages other than essential oils; condiments; malted wheat extract; farinaceous foods; farinaceous food pastes; preserved herbs; soy bean paste; pasta; pasta-based prepared meals; ravioli; lasagne; noodles; noodle-based prepared meals; semolina; sago; tapioca; salad dressings; pies; pizzas; burgers and hamburgers in this class; prepared meals consisting predominantly of rice, pasta or noodles; vegetarian meals consisting predominantly of rice, pasta or noodles; almond paste; bean meal; sausage binding materials; starch for food; vanilla and vanilla substitutes; fruit sauces; sauces; baking-powder; salt; mustard; vinegar; sauces (condiments); spices; turmeric; cinnamon; ice; ices; ice cream; frozen yoghurt; confectionery; confectionery bars containing soy nuggets, fruits and coated with chocolate; desserts and puddings; honey; sugar; treacle; golden syrup; natural sweeteners; tea; tea-based beverages; tea substitutes; artificial tea; cocoa; cocoa-based beverages; chocolate-based beverages; cocoa substitutes; artificial cocoa; chocolate-based beverages; teas including chai and other than for medicinal or therapeutic purposes
Class 31: Agricultural, horticultural and forestry products not included in other classes; grains (cereals); raw, unprocessed and fresh fruits, nuts and vegetables; raw and unprocessed grains and seeds; raw cacao; natural plants and flowers; malt; live fish; live animals; animal feed and pet food
Class 32: Mineral and aerated waters; non-alcoholic drinks; soft drinks; fruit drinks and fruit juices; vegetable juices; syrups and other preparations for making beverages; soy-based beverages not being milk substitutes; rice-based beverages not being milk substitutes; nut-based beverages not being milk substitutes; isotonic beverages; smoothies; smoothies containing grains and oats; fruit smoothies; vegetable smoothies
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