Opposition by The a2 Milk Company Limited to registration of trade mark application number 1985165 (class 5, 29) – NAN A2 LOGO - in the name of Societe des Produits Nestle S.A.
[2021] ATMO 69
•26 July 2021
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by The a2 Milk Company Limited to registration of trade mark application number 1985165 (class 5, 29) – NAN A2 LOGO - in the name of Societe des Produits Nestle S.A.
Delegate: Jock McDonagh Representation: Opponent: Michelle Cooper of Adams Pluck, IP Attorneys
Applicant: Alison McGinn and Vina Ngo of Banki Haddock Fiora, LawyersDecision: 2021 ATMO 69
Trade Marks Act 1995 (Cth) – opposition under section 52 – grounds pressed under ss 42(b), 44 and 60 – no grounds established – trade mark to proceed to registration.Background
This is an opposition brought by The a2 Milk Company Limited ('Opponent') pursuant to s 52 of the Trade Marks Act 1995 (Cth) ('Act') to registration of the trade mark subject of the application detailed below in the name of Societe des Produits Nestle S.A. ('Applicant' or ‘Nestle’):
Trade mark: (‘Trade Mark’) Trade mark application: 1985165 Filing Date: 24 January 2019 (‘Priority Date’) Specification: Class 5: Dietetic food, beverages and substances adapted for medical and clinical use; food and food substances for babies; infant formula; lacteal flour for babies; powdered milk for babies; food and food substances for medical use for children and invalids; food and food substances for nursing mothers for medical use; nutritional supplements for medical purposes for pregnant women and nursing mothers; nutritional supplements; dietary supplements for medical use; nutritional and dietary supplements for medical use; vitamin preparations, mineral-based preparations; dietary fiber; vitamins; vitamin preparations and substances; dietary and nutritional supplements
Class 29: Milk and milk products; powdered milk; preparations and beverages based on milk; milk substitutes; milk beverages, milk predominating; milk based beverages containing cereals and / or chocolate; yogurt; soya milk (milk substitutes)
(‘Applicant’s goods’)
Following the advertisement on 25 July 2019 in the Australian Official Journal of Trade Marks of the application's acceptance for possible registration, the Opponent filed a Notice of Intention to Oppose on 25 September 2019. The Opponent then filed a Statement of Grounds and Particulars ('SGP') on 25 October 2019. The SGP raised grounds of opposition under ss 42(b), 44, and 60 of the Act. The Applicant filed a Notice of Intention to Defend on 3 December 2019.
Evidence and Submissions
The Opponent filed Evidence in Support ('EIS') on 6 March 2020. This evidence consists of a declaration made on 3 March 2020 by Susan Massasso, Global Chief Marketing Officer for the Opponent, with Exhibits SM-1 to SM-4 ('Massasso 1’) and a declaration made on 2 March 2020 by Dr Andrew John Clarke, Chief Scientific Officer of the Applicant, with Exhibit AJC-1 (‘Clarke 1’). Exhibit AJC-1 to Clarke 1 consists of a declaration made by Dr Clarke on 11 September 2019 in respect of a previous matter before this office. Exhibit SM-1 to Massasso 1 consists of a declaration made by Ms Massasso on 11 September 2019 in respect of a previous matter before this office.
The Applicant filed Evidence in Answer (‘EIA’) on 9 June 2020. This evidence consists of a declaration made on 9 June 2020 by Xavier Payrard (‘Payrard’) with Exhibits XP-1 to XP-14, a declaration made on 2 June 2020 by Peter John Fryer (‘Fryer’) with Exhibit PJF-1, a declaration made on 4 June 2020 by Vina Ngo (‘Ngo’) with Exhibits VN-1 to VN-17, and a declaration made on 4 June 2020 by Benjamin Mark Wilson (‘Wilson’) with Exhibit BMW -1.
The Opponent filed Evidence in Reply ('EIR') on 10 August 2020. This evidence consists of a declaration made on 10 August 2020 by Susan Massasso (‘Massasso 2') and a declaration made on 10 August 2020 by Dr Andrew John Clarke (‘Clarke 2’).
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. On 10 September 2020, the Opponent requested an oral hearing with the Applicant making a similar request on 17 September 2020. The matter was set down for a hearing by way of video conference on 9 April 2021 and the matter was allocated to me. The Opponent filed written submissions on 26 March 2021 ('Opponent's Submissions'). The Applicant filed written submissions on 2 April 2021 ('Applicant's Submissions').
At the video hearing Michelle Cooper of Adams Pluck represented the Opponent and Alison McGinn and Vina Ngo of Banki Haddock Fiora represented the Applicant. The hearing was held by me, a delegate of the Registrar of Trade Marks on 9 April 2021.
I am to decide the opposition as required by s 55 of the Act which provides that, unless the proceedings are discontinued, dismissed, or have lapsed under s 54A 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. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and the submissions made at the hearing.
The Opponent
The Opponent is a New Zealand company that is the parent company within the a2 Milk corporate group (with the members of that group being collectively referred to as 'A2MC').
The Massasso 1 declaration contains the following claims/statements:
·A2MC was founded in 2000 with the intention of bringing dairy products free of A1 proteins to consumers. A2MC has a corporate presence in Sydney and Melbourne and a milk processing facility in NSW.
·A2MC commenced use (in Australia) of its trade mark A2 Milk (‘A2 Mark’), either in word or stylised logo format, in 2004. The A2 Mark has been applied to all of the Opponent's branded milk and dairy products and has been registered as a trade mark in various jurisdictions around the world. In addition A2MC uses various stylised forms of the letters A2 (‘Stylised Marks’) as trade marks in Australia.
·The A2 Mark and Stylised Marks are used on packaging for the Applicant's branded milk products as well as on the Opponent's websites at and and in its marketing activities. It also has been used in third party media discussion of the Opponent.
The Clarke 1 declaration contains the following claims/statements:
·Most cows’ milk sold in Australia contains a selection of beta-casein proteins, including A1 and A2. By contrast A2MC's dairy products do not contain any A1 type beta-casein proteins. This decision is based on scientific research that suggests that milk that is free from A1 protein has been associated with reduced symptoms in individuals who are dairy sensitive.
The EIR repudiates certain statements made in the EIA and asserts that the market in Australia views the A2 Mark as referring to a brand, and not a description of a certain type of milk.
The Applicant
Payrard contains the following background claims/statements about the Applicant:
·Nestlé manufactures and sells a wide range of foods and beverages. Its products are available in nearly every country around the world. It was founded in 1866 and commenced trading in Australia in 1908. In 1921, its Australian branch was incorporated locally and is today known as Nestlé Australia Ltd. Nestlé operates in more than 190 countries and has more than 328,000 employees.
·Among the goods that are manufactured or sold by Nestlé are coffee and tea products; cereal and milk products; infant nutrition products; bottled water and other drinks; chocolate and confectionery; culinary, chilled and frozen food; ice cream and other dairy products; specialised food service products; infant nutrition; healthcare nutrition products and pet care products. Nestlé, including Nestlé Australia Ltd, is constantly developing and introducing new brands and new products to meet the changing and growing demands of consumers and to remain competitive in new markets and market sectors throughout the world.
·Dairy is Nestlé’s biggest category by volume globally. Milk and milk derivatives are used in many of Nestlé’s products, including dairy and infant nutrition products, as well as ice cream, beverages and confectionery. Milk is an important ingredient in nutrition, as it contains large quantities of first-rate protein, and is also an important source of energy, calcium, magnesium and phosphorus, as well as many essential vitamins and trace minerals.
·Today, in terms of sales value, Nestlé is the world’s largest milk company, sourcing more than 12 million tonnes of fresh milk equivalents from more than 30 countries. Nestlé purchases more than half of its milk locally as fresh milk (close to 7 million tonnes per year).
Ngo contains information about the state of the Register and the use of A2 in the market. Fryer consists of evidence regarding the use of A2 as a descriptive term for milk lacking the A1 beata casein protein and Wilson gives evidence about the registration of certain domain names by third parties containing ‘a2’.
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42, 44, and 60 of the Act. The onus of proof in an opposition rests upon the Opponent. The relevant standard of proof is the ordinary civil standard based on the balance of probabilities. The date at which the rights of the parties are to be determined is 24 January 2019, being the filing date of the application ('the relevant date').
Discussion
Section 44
The relevant provisions of the Act with respect to the ground of opposition pursuant to 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.
To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of similar goods, and/or services which are closely related to, the Applicant’s goods (‘the third requirement’).
The Opponent has particularised the ground of opposition in the SGP by reference to some 36 trade marks, which I detail in Annexure 1 to this decision. Each of these depict an array of plain text or stylised iterations of “a2” (or in two instances “A2”), most of which are accompanied by additional word elements that are quite different to the Applicant’s ‘NAN A2’. The Applicant points out the Opponent does not have “A2” solus registered and I note that only the following trade marks feature a stylised “a2” unaccompanied by other word elements (together ‘the “a2” marks’):
Trade Mark: 1132314 Priority Date: 04 May 2007
(‘the “a2” Heart Mark’)
Class 5: Semen products; animal breeding products and materials; 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
Class 44: Veterinary services; animal breeding services; animal testing services for breeding purposes
Trade Mark: 1328062 Priority Date: 27 October 2009
(‘the “a2” Splash Mark’)
Class 29: Milk and milk products in this class, other goods in this class which include milk or milk products as ingredients
Trade Mark: 1422098 Priority Date: 23 May 2011 (Convention)
(‘the “a2” Droplet Mark’) 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
Trade Mark: 1676054 Priority Date: 20 February 2015
(‘the “a2” Conjoined Mark’)
Class 5: Food for infants; powdered milk for babies; dietetic beverages adapted for medical use
Class 29: Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating; cream
The Opponent’s trade marks were also considered by Hearing Officer Aaron Walters in The a2 Milk Company Limited v Open Country Dairy Limited[1] (‘OPEN COUNTRY’), an opposition to the registration of the trade mark ‘OPEN COUNTRY A2’.
[1] [2019] ATMO 143.
Like Hearing Officer Walters, I find I need only consider the “a2” Marks for the purposes of the discussion under s 44 of the Act for the following reasons. The Opponent considers the “a2” element is the most prominent element and, of all the marks put forward by the Opponent, both plain word and composite, this is the only shared element with the Trade Mark. Accordingly, were I not to find the Trade Mark substantially identical with or deceptively similar to the “a2” Marks, and given the presence of ‘A2’ in the Trade Mark, my findings would be largely similar for the Opponent’s remaining cited marks.
The “a2” Marks do have priority dates that are earlier than the priority date of the Trade Mark. I find the first requirement satisfied.
Further, there is no dispute that registration of the Trade Mark is sought in respect of goods and services similar or closely related to those of the “a2” Marks. However, for clarity’s sake and for obvious reasons, I do not find the animal breeding products and services, or veterinary services claimed under trade mark number 1132314 to be similar or closely related to milk and dairy products, or the retailing of milk and dairy products. I find the third requirement satisfied.
Substantially identical and/or deceptively similar
I will now consider whether the Trade Mark is substantially identical or deceptively to the “a2” Marks. Whether these marks are substantially identical is not a matter of controversy between the parties and, bearing in mind the well-known test,[2] I find the marks are not substantially identical.
[2] See Shell Co (Aust) Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 407, 414-415 (Windeyer J) and Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (2017) 251 FCR 379, 392 (Greenwood, Jagot and Beach JJ).
The primary matter for discussion under s 44 is whether the marks are deceptively similar. I have cited the definition of s10 of the Act above. The general principles are well established.[3] The task is to be approached by comparing each mark in its entirety,[4] with consideration given to any visual and aural similarities as well as the idea of the marks in question.[5] Importantly, allowance is to be made for the imperfect recollection of consumers in determining whether the resulting impressions amount to a tangible likelihood of deception or confusion,[6] as well as regard had for the surrounding circumstances,[7] including the manner in which the trade marks could, in principle, be used.
[3] See Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd (2012) 97 IPR 183, 188-9 (Jacobson J).
[4] Food Channel Network Pty Ltd v Television Food Network GP (2010) 185 FCR 9, 36; Clark v Sharp (1898) 15 RPC 141, 146.
[5] Mars Australia Pty Ltd v Sweet Rewards Pty Ltd (2009) 81 IPR 354, 375-6 (Perram J), summarising the principles discussed in Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 17-9 (Moore, Sackville and Emmett JJ).
[6] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 209 ALR 1, 18 (Moore, Sackville and Emmett JJ), referring to Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 (Dixon, Evatt and McTiernan JJ).
[7] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J).
Important to the present matter is a consideration of the marks in their entirety, the process for which is described in Clark v Sharp:
One must bear in mind the points of resemblance and the points of dissimilarity, attaching fair weight and importance to all, but remembering that the ultimate solution is to be arrived at, not by adding up and comparing the results of such matters, but by judging the general effect of the respective wholes.[8]
[8] (1898) 15 RPC 141, 146.
The single point of similarity between each trade mark should, by now, be obvious. The “a2” Marks each prominently display “a2” in stylized lettering surrounded by varying degrees of ‘get-up’, ranging from the quite fanciful (i.e. the “a2” Heart Mark and the “a2” Splash Mark) to the more sedate (i.e. the “a2” Droplet Mark and the “a2” Conjoined Mark).
In earlier decisions of this Office, Re A2 Corporation Ltd,[9] LD&D Australia Pty Ltd v The a2 Milk Company Limited,[10] and OPEN COUNTRY, the term ‘A2’ has been determined to be descriptive of the signification that the goods so labelled do not contain A1 beta-casein protein.
[9] [2014] ATMO 94.
[10] [2019] ATMO 110.
The Trade Mark commences with the stylised and distinctive word ‘NAN’, followed by a stylised rendition of the capital letter ‘A’ superimposed with the figure ‘2’.
In this matter, I accept “a2” is an important aspect of the “a2” Marks. However, as each of the “a2” Marks are composite marks,[11] the whole of the impression is not simply contained in “a2” alone. Due to its descriptive nature, the general effect or impression flowing from each of these marks is linked to its particular stylized rendition of “a2” rather than the letter/number combination “a2” itself. This does not mean the descriptive text should be completely disregarded, such that consideration is only had for the surrounding stylisation. To disregard it completely would be punitive; as explained by the Delegate in The BBQ Store Pty Ltd v B B Q Factory Pty Ltd:
To compare these devices in isolation would be to forget why descriptive words are discounted. It is not to exact punishment for the use of a descriptive term. This is a practical question, as I have noted, that depends on the circumstances. To put it another way, these elements will often be read down because the test for deceptive similarity requires an estimation of their effect on the mind of the relevant consumer. Purely descriptive matter will in many circumstances be less likely to be taken by those persons to be an indication of origin.[12]
[11] Or as it may relate to the Opponent’s remaining trade marks, marks with additional word elements.
[12] [2019] ATMO 132, [23].
Noting the definition contained in s 10 of the Act, a finding of deceptive similarity requires that I be satisfied of the Trade Mark so nearly resembling the “a2” Marks that it is likely to deceive or cause confusion. I am not so satisfied. The danger of confusion or deception occurring must go beyond mere possibility – it must be real and tangible.[13] I do not consider it a likelihood that a consumer will imperfectly recall and subsequently confuse the Trade Mark with any of the “a2” Marks. In my view, this would involve a mental exercise which implausibly disregards the significance of ‘NAN’ and attaches undue weight to an element that might be considered descriptive of the Applicant’s goods. It follows that I do not consider consumers ‘will be caused to wonder’ whether goods bearing the Trade Mark originate from the same source as that of the Opponent.[14]
[13] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5 (Kitto J).
[14] Ibid.
The Opponent has not established the ground of opposition under s 44 of the Act.
Section 60
Section 60 of the Act provides:
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note:For priority date see section 12.
It is not necessary to show under s 60 that the respective trade marks are deceptively similar although such a finding can be relevant in determining the likelihood of deception or confusion.
Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick[15](‘McCormick’) by Kenny J at [81] – [82]:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?
[15] (2000) 51 IPR 102.
Further, at [86], Kenny J said:
In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product.
The Opponent’s SGP and submissions broadly state that there is substantial evidence to demonstrate the reputation attached to the “A2 brand”, with goods sold under the Opponent’s “various A2 trade marks” being extremely popular. Massasso 1 contains the majority of evidence pertaining to the Opponent’s reputation in its trade marks. Having reviewed this, I would observe the following:
·From 2012 and up to the relevant date, the Opponent’s fresh milk products enjoyed strong market share of approximately 8-9% in Australia.
·From 2012 and up to the relevant date, the Opponent has offered fresh milk, ice cream, infant formula and milk powder products under the A2 brand, with the Opponent developing a significant market share in Australia for infant formula and milk powder.
·The Opponent’s products are available online and through more than 2500 retailers across Australia, including well-known major supermarkets Woolworths and Coles.
·As of June 2016, the Opponent’s products are used in approximately 250 cafés across Sydney and Melbourne.
·Since 2006, the Opponent has engaged in substantial television, radio and online promotion of its products, reaching a significant number of Australian consumers.
I find the Opponent is a well-known producer of dairy products and would likely have a reputation known to a significant portion of the Australian population. Though, as the words of the Act prescribe, this reputation must exist in a trade mark. As commented by Yates J in Qantas Airways Limited v Edwards (‘Qantas’):
[Qantas] referred to the many millions of dollars it spends on advertising each year. It submitted that, ordinarily, the greater the volume of sales and advertising and promotional expenditure associated with a mark, the greater the esteem in which the mark will be held and, hence, the greater its reputation will be. This submission is certainly supported by Lockhart J in ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302; [1992] FCA 176 at 343 and by Kenny J in McCormick [& Company Inc v McCormick [2000] FCA 1335] at [86]. However, it is one thing to say that a reputation can be deduced from such evidence. It is another thing to determine what that reputation is and what association consumers make when confronted with the particular trade indicium in which that reputation resides. This also brings into question the context of use.[16]
[16] [2016] FCA 729, [150].
The Opponent relies on a range of “a2” Marks used over a period of time as ‘A2 branded milk’. It does not specify which particular trade marks in which it asserts that it has a reputation.
Between the years of 2009 and 2014, Massasso 1 states the Opponent predominantly used stylized marks containing only ‘a2’, rather than ‘a2 Milk’, to remain consistent with its previous corporate name, A2 Corporation Pty Ltd. At the end of 2014, the Opponent moved back to using stylized logos containing ‘a2 Milk’ which better aligned to its new corporate identity, A2MC. Although acknowledging the ‘range of different stylized logos’ used, these have always included ‘a2’, which Massasso 1 asserts as meaning the Opponent has established a reputation in ‘a2’ alone.
For the purposes of the Act, this is not a correct assertion. Each mark is separate when considering the operation of s 60 and it is appropriate to consider the use to which they have been put. Exhibit SM-11 to Massasso 1 provides images of the packaging used on the Applicant's milk products from 2006 up to 2018, including the following:
2012
2014
2016
I am not convinced that it is the plain words “a2” or “a2 Milk” alone which are the particular ‘trade indicium’ in which the Opponent’s reputation resides. Rather, I consider the Opponent has demonstrated, as at the relevant date, a reputation exists in the various stylised marks used and the various marks featuring ‘a2 Milk’.
It is not sufficient that the Opponent merely establishes that its trade marks have a reputation; the Registrar must also be satisfied that because of that reputation the use of the 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.[17]
[17] (1937) 58 CLR 641, 658.
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.[18]
[18] (1999) 45 IPR 411, 428. These considerations by French J are based on principles set out by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 594-5.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi the delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.[19]
[19] [2012] ATMO 124, [40].
While it is not necessary to show that the marks are deceptively similar for the purposes of an opposition under s 60, as stated in Qantas Airways Limited v Edwards, ‘the degree of similarity between the allegedly conflicting marks will be a relevant consideration to be taken into account when considering the likelihood of confusion resulting from use of the opposed mark.’[20]
[20] [2016] FCA 729, [142].
I am not satisfied that by reason of the Opponent’s reputation in the various marks there is a likelihood of deception or confusion arising. The elements of the Trade Mark including the “NAN” element effectively distinguish the Trade Mark as a whole from any mark that the Opponent would have a reputation in.
I further note that to the extent that the marks are similar, it is due to the shared use of the letter number combination A2 which is used in a descriptive manner in the market (including by a significant number of other traders). In such circumstances the presence of the common element ought to be given less weight in considering whether the respective marks are deceptively similar.
Stephen J observed[21] in Hornsby Building Information Centre Pty Ltd v Sydney Building Information Centre Ltd that:
There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name. Because it is descriptive it is equally applicable to any business of a like kind, its very descriptiveness ensures that it is not distinctive of any particular business and hence its application to other like businesses will not ordinarily mislead the public. In cases of passing off, where it is the wrongful appropriation of the reputation of another or that of his goods that is in question, a plaintiff which uses descriptive words in its trade name will find that quite small differences in a competitor’s trade name will render the latter immune from action (Office Cleaning Services Ltd. v. Westminster Window and General Cleaners Ltd. (1946) 63 RPC 39, at p 42, per Lord Simonds). As his Lordship said (1946) 63 RPC, at p 43, the possibility of blunders by members of the public will always be present when names consist of descriptive words - “So long as descriptive words are used by two traders as part of their respective trade names, it is possible that some members of the public will be confused whatever the differentiating words may be.” The risk of confusion must be accepted, to do otherwise is to give to one who appropriates to himself descriptive words an unfair monopoly in those words and might even deter others from pursuing the occupation which the words describe.[22]
[21] Albeit in relation to trade practices.
[22] 140 CLR 216, 229.
Given the differences between the marks and in particular the addition of the various elements to the Trade Mark, I find that to the extent confusion could arise between the marks this stems entirely from the use of the descriptive term in the respective marks, not because of reputation in any of the marks put forward by the Opponent for the purposes of this ground.
I am not satisfied that use of the Trade Mark would be likely to deceive or cause confusion. Consequently, I find that the Opponent has failed to establish the ground of opposition pursuant to s 60 of the Act.
Section 42
Section 42 of the Act 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) the trade mark contains or consists of scandalous matter; or
(b) its use would be contrary to law.
The onus is on the Opponent to establish that use of the Trade Mark by the Applicant would be, rather than could be, contrary to law on the balance of probabilities.[23] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[24]
[23] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[24] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.
The Opponent nominated contraventions of ss 18 and 29 of the Australian Consumer Law (‘ACL’) and passing off. Section 18 is contravened when a party engages in conduct in trade or commerce that is misleading or deceptive, or is likely to mislead or deceive customers. Section 29 applies where use of the Trade Mark would amount to a false representation within the terms of s 29.
As I have found that the use of the Trade Mark is not, at a minimum, likely to ‘deceive or confuse’ under s 60, it follows that the use is not, on the stricter test posited by the ACL,[25] likely to mislead or deceive within the meaning of s 18, nor do I believe use would amount to a false representation in terms of s 29, nor passing off.
[25] Parkdale Custom Built Furniture Pty. Limited v Puxu Pty Limited 1982] HCA 44.
I therefore find that the Opponent has not established the ground of opposition under s 42(b) of the Act.
Decision
The Opponent has failed to establish any of the grounds of opposition it nominated in the SGP. Trade Mark application no. 1985165 may proceed to registration not less than one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until either the appeal is withdrawn or discontinued. Otherwise, the disposition of the application should be in accordance with the Court’s order or direction.
Costs
The parties both sought an award of costs in their favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 of the Act in the relevant amounts under Schedule 8 of the Regulations.
Jock McDonagh
Hearing Officer
Delegate of the Registrar of Trade Marks26 July 2021
ANNEXURE 1
| No. | Trade Mark | Priority Date | Goods & Services |
| 827411 | A2 TRUE | 22/2/2000 | Class 5: Pharmaceutical substances, dietetic substances adapted for medical use and food for babies; all being goods in this class which comprise milk or milk products, or include milk or milk products as ingredients Class 29: Milk and milk products in this class, other goods in this class which include milk or milk products as ingredients |
| 940455 | 16/1/2003 | Class 5: Health food supplements and additives including drinks made from milk and milk products; dietetic substances including drinks made from milk and milk products Class 29: Milk and milk products in this class, other goods in this class which include milk or milk products as ingredients | |
| 1132314 | 30/8/2006 | Class 5: Semen products; animal breeding products and materials; infant foods; milk and milk powder for infants Class 44: Veterinary services; animal breeding services; animal testing services for breeding purposes | |
| 1174435 | 4/5/2007 | Class 5: Semen products; animal breeding products and materials; 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 Class 44: Veterinary services; animal breeding services; animal testing services for breeding purposes | |
| 1299413 | A2 PROTECT | 15/5/2009 | 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 |
| 1328062 | 27/10/2009 | Class 29: Milk and milk products in this class, other goods in this class which include milk or milk products as ingredients | |
| 1374937 | 29/7/2010 | 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 | |
| 1384603 | a2Platinum | 21/9/2010 | Class 5: Dried milk preparations being food for babies; milk powder for foodstuffs for babies; milk powder for nutritional purposes for babies; powdered milk foods for infants Class 29: Dried milk products; preparations for making beverages (milk based) |
| 1396603 | A2 FEEL THE DIFFERENCE | 25/11/2010 | 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 |
| 1396604 | 25/11/2010 | 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 | |
| 1422098 | 23/3/2011 | 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 | |
| 1454858 | 20/10/2011 | 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 | |
| 1467103 | 7/10/2011 | 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 | |
| 1580828 | 18/9/2013 | Class 29: Milk and milk products in this class, other goods in this class which include milk or milk products as ingredients | |
| 1668754 | 13/1/2015 | Class 5: Food for infants; powdered milk for babies; dietetic beverages adapted for medical use Class 29: Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating | |
| 1672247 | 3/2/2015 | Class 5: Food for infants; powdered milk for babies; dietetic beverages adapted for medical use Class 29: Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating | |
| 1676054 | 20/2/2015 | Class 5: Food for infants; powdered milk for babies; dietetic beverages adapted for medical use Class 29: Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating; cream | |
| 1679006 | 3/9/2014 | Class 5: Infant food; milk and milk powder for infants; dietetic food and beverages Class 29: Milk and milk products in this class; other goods in this class which include milk or milk products as ingredients | |
| 1727483 | a2 Ice Cream | 13/10/2015 | Class 30: Ice cream, frozen yoghurt; ices; desserts |
| 1727484 | 13/10/2015 | Class 30: Ice cream, frozen yoghurt; ices; desserts | |
| 1727485 | 13/10/2015 | Class 30: Ice cream, frozen yoghurt; ices; desserts | |
| 1732114 | THE a2 MILK COMPANY | 4/11/2015 | Class 30: Ice cream, frozen yoghurt; ices; desserts |
| 1744867 | a2 PLATINUM | 3/12/2015 | Class 5: Powdered milk foods for infants; powdered milk for babies Class 29: Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating |
| 1749546 | THE a2 MILK COMPANY | 24/2/2014 | 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 |
| 1764260 | DO YOU a2? | 12/4/2016 | Class 5: Food for infants; milk and powdered milk for infants; dietetic foods and beverages Class 9: Downloadable electronic publications; electronic downloadable publications provided online from databases or the Internet; downloadable computer software applications; computer software Class 16: Printed materials; printed publications; photographs Class 29: Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating Class 30: Ice cream; frozen yoghurt; edible ices; desserts Class 38: Audio, visual and multimedia transmission services; providing access to electronic and online databases Class 41: Providing electronic publications (not downloadable); publication of journals, pamphlets, newspapers; publication of magazines; on-line publication of journals, diaries, blogs and forums Class 42: Providing online non- downloadable software; design and development of software; hosting computer websites; hosting of databases |
| 1798327 | a2tonishing | 12/4/2016 | Class 5: Food for infants; milk and powdered milk for infants; dietetic foods and beverages Class 29: Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating |
| 1818256 | 16/6/2016 | Class 5: Food for infants; powdered milk for babies; dietetic beverages adapted for medical use; animal semen; diagnostic preparations for veterinary purposes for detecting genetic predispositions; diagnostic test reagents for veterinary use Class 29: Milk powder; milk; cream; butter; cheese; yoghurt; milk beverages, milk predominating Class 30: Ice cream, frozen yoghurt; ices; frozen desserts Class 44: Veterinary services; animal breeding; providing information relating to animal breeding; genetic testing of animals for breeding purposes; breeding and stud services for animals | |
| 1831988 | 1/6/2016 | Class 5: Food for infants; powdered milk for babies; dietetic beverages adapted for medical use; animal semen; diagnostic preparations for veterinary purposes for detecting genetic predispositions; diagnostic test reagents for veterinary use Class 29: Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating Class 30: Ice cream, frozen yoghurt; ices; frozen desserts Class 44: Veterinary services; animal breeding; providing information relating to animal breeding; genetic testing of animals for breeding purposes; breeding and stud services for animals | |
| 1836336 | a2 Milk | 5/4/2017 | Class 5: Food for infants; powdered milk for babies; dietetic beverages adapted for medical use Class 29: Milk powder; milk; butter; cream; cheese; yoghurt; milk beverages, milk predominating |
| 1839265 | THANK YOU a2 | 27/6/2016 | Class 5: Food for infants; powdered milk for babies; dietetic foods and beverages. Class 9: Downloadable electronic publications; electronic downloadable publications provided online from databases or the Internet; downloadable computer software applications; computer software Class 16: Printed materials; printed publications; photographs. Class 29: Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating. Class 38: Audio, visual and multimedia transmission services; providing access to electronic and online databases Class 41: Providing electronic publications (not downloadable); publication of journals, pamphlets, newspapers; publication of magazines; on-line publication of journals, diaries, blogs and forums Class 42: Providing online non- downloadable software; design and development of software; hosting computer websites; hosting of databases |
| 1868169 | 10/5/2017 | Class 5: Food for infants; milk and powdered milk for infants; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements; protein dietary supplements Class 29: Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating Class 30: Ice cream, frozen yoghurt; ices; frozen desserts | |
| 1868380 | 10/5/2017 | Class 5: Food for infants; milk and powdered milk for infants; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements; protein dietary supplements Class 29: Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating Class 30: Ice cream, frozen yoghurt; ices; frozen desserts | |
| 1868382 | 10/5/2017 | Class 5: Food for infants; milk and powdered milk for infants; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements; protein dietary supplements Class 29: Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating Class 30: Ice cream, frozen yoghurt; ices; frozen desserts | |
| 1868383 | 10/5/2017 | Class 5: Food for infants; milk and powdered milk for infants; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements; protein dietary supplements Class 29: Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating Class 30: Ice cream, frozen yoghurt; ices; frozen desserts | |
| 1907196 | a2 True | 15/2/2018 | Class 5: Food for infants; milk and powdered milk for infants; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements; powdered nutritional supplement drink mixes; dietary supplemental drinks; protein dietary supplements; protein powder Class 29: Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating; milk- based protein drinks; whey; dry whey; protein powder for use as a food additive |
| 1935719 | TRUE a2 | 21/6/2018 | Class 5: Food for infants; milk and powdered milk for infants; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements; powdered nutritional supplement drink mixes; dietary supplemental drinks; protein dietary supplements; protein powder (dietary supplements); animal semen for artificial insemination; diagnostic preparations for veterinary purposes for detecting genetic predispositions; diagnostic test reagents for veterinary use |
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