Re: Opposition by LD&D Australia Pty Ltd to registration of trade mark application 1751238 (29) True A2 filed in the name of The a2 Milk Company Limited
[2019] ATMO 85
•3 June 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by LD&D Australia Pty Ltd to registration of trade mark application 1751238 (29) – TRUE A2 - filed in the name of The a2 Milk Company Limited
Delegate: Nicholas Smith Representation: Opponent: Gabriella Rubagotti, counsel instructed by Judith King of Baker & McKenzie
Applicant: Richard Cobden SC, counsel instructed by Richard Watts of Simpson GriersonDecision: 2019 ATMO 85
Trade Marks Act 1995 (Cth) - Section 52 opposition: s 41 considered – ground established – registration refusedBackground
This is an opposition brought by LD&D Australia Pty Ltd (‘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 The a2 Milk Company Limited (‘Applicant’):
Application Number:
1751238
Filing Date:
9 February 2016
Goods:
Class 29: Milk powder; milk; cream; butter; cheese; yoghurt; milk beverages, milk predominating (‘Applicant’s Goods’)
Trade Mark:
TRUE A2
(‘Trade Mark’)
Following the advertisement on 3 August 2017 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 3 October 2017. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 3 November 2017. The SGP raised a ground of opposition under s 41 of the Act. The Applicant filed a Notice of Intention to Defend on 12 December 2017.
Evidence and Submissions
The Opponent filed Evidence in Support of its opposition (‘EIS’) on 19 March 2018. This evidence consists of a declaration made on 19 March 2018 by Nicole Doolette, acting Category Marketing Director – White Milk & Culinary for the Lion-Dairy & Drinks group which includes the Opponent as its subsidiary, with Annexures ND-1 to ND-89 (‘Doolette 1’) and a declaration made on 19 March 2018 by Adam James Francis, founding partner and Executive Creative Director of advertising agency AJF Partnership (‘Francis Declaration’).
The Applicant filed Evidence in Answer (‘EIA’) on 28 June 2018. This evidence consists of a declaration made on 26 June 2018 by Susan Massasso, Global Chief Marketing Officer for the Applicant, with Exhibits SM-1 to SM-34 (‘Massasso Declaration’) and a declaration made on 25 June 2018 by Dr Andrew John Clarke, Chief Scientific Officer of the Applicant (‘Francis Declaration’).
The Opponent filed Evidence in Reply (‘EIR’) on 24 September 2018. This evidence consists of a declaration made on 24 September 2018 by Nicole Doolette, with Annexures ND-90 to ND-94 (‘Doolette 2’).
On 24 October 2018, the Opponent sought to file an additional declaration that was filed after the period for filing EIR had ended. By e-mail dated 6 March 2019, I indicated that I was not satisfied that the Opponent had put forward a compelling case in favour of the late-filed material being considered and that I would not exercise the discretion available to the Registrar to have regard to the late-filed materials.
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 24 October 2018 the Opponent requested an oral hearing with the Applicant making a similar request the next day. The matter was set down for a hearing in Sydney on 9 April 2019 and the matter was allocated to me. In line with usual practice, letter was sent to the parties on 27 February 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 26 March 2019 (‘Opponent’s Submissions’). The Applicant filed written submissions on 2 April 2019 (‘Applicant’s Submissions’). At the hearing Richard Cobden SC of counsel instructed by Richard Watts of Simpson Grierson represented the Applicant and Gabriella Rubagotti of counsel instructed by Judith King of Baker & McKenzie represented the Opponent, both appearing in person.
I am a delegate of the Registrar of Trade Marks and 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 an Australian company that is the subsidiary of the Lion-Dairy & Drinks Pty Ltd Group (with the members of that group, including the Opponent, being collectively referred to as ‘LDD’).
Doolette 1 contains the following claims/statements:
· LDD develops, manufactures and sells a broad range of dairy and juice products. This includes white milk (full cream and modified milks) under the brands PURA and Dairy Farmers.
· The word ‘true’ has various dictionary meanings including ‘real or genuine’.
· The term ‘A2 Milk’ is defined in the Macquarie Dictionary as ‘noun milk which contains only A2 beta-casein proteins, thought to be less allergenic than milk which contains A1 proteins’.
· A2 beta-casein protein is a naturally occurring protein found in cows’ milk, as is A1 beta-casein protein. Through selective breeding processes, farmers can breed cows that make milk that contains only the A2 protein.
· The Dietitians Association of Australia defines milk labelled as ‘A2 Milk’ as containing mainly the A2 protein.
· Milk is regularly promoted to customers by advertising the type of milk or particular nutrients or components in the milk, with Australia’s various milk producers all selling many different milk variants.
· Various food and dairy producers use the word ‘true’ on their product to indicate that that product has genuine or authentic characteristics; i.e. true cultured yoghurt or true fruit. LDD has used words similar to true in its marketing, such as pure, real, or authentic.
· The term A2 is used extensively in the dairy industries to refer to milk that contains A2 proteins. This includes articles about the dairy industry published more widely.
· Since mid-2014 LDD has, on its labels for a number of its dairy products, referred to the A2 protein content of the particular dairy product, including the words ‘Naturally contains A2 protein’ or similar variants. These products have been advertised extensively.
· Numerous other milk producers use the term A2 or A2 Milk to refer to the protein content of their products.
· The Applicant has used True A2 on its website in a descriptive sense, to refer to a type of milk that contains only or predominantly A2 proteins.
Doolette 2 contains extracts from various advertisements run by the Applicant and also notes that the dairy producer ‘Australia’s Own’ produces a product that is referred to as ‘A2 protein milk’.
The Francis Declaration contains the following claims/statements:
· The Deponent has extensive experience in the marketing of dairy and foodstuff products and has been involved with the Opponent’s marketing for 15 years.
· The Deponent, based on his professional and personal experience, believes that it is well known among consumers of dairy milk that cows’ milk contains A2 and A1 proteins.
· Consumers are aware that there are various different types of milk in the market and milk is commonly advertised by reference to its characteristics, such as low fat, full cream or high protein.
· Words such as ‘True’ (or ‘pure’ or ‘real’) before an ingredient or characteristic are often used to reinforce or communicate that the product is genuine or not fake and the Trade Mark would be seen as a descriptor or quality of a dairy product.
The Applicant
The Applicant is a New Zealand company that is the parent company within The a2 Milk Company Group (with the members of that group, including the Applicant and its Australian subsidiary The a2 Milk Company (Australia) Pty Limited, being collectively referred to as ‘A2MC’).
The Massasso 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 has a variety of products, all of which are A1 protein free. In particular A2MC produces infant formula under the A2 Platinum brand, which is stocked in over 2,500 stores in Australia. As of March 2016, A2MC had a 14.4% share of the infant baby formula market. A2MC’s sales of its baby formula in the years prior to the filing date were substantial and have continued to grow strongly.
· A2MC developed and commenced use (in Australia) of the Trade Mark, either in word or logo format, in 2012. The Trade Mark has been applied to all of the Applicant’s Goods and has been registered as a trade mark in various jurisdictions around the world.
· The Trade Mark is used on packaging for the Applicant’s Goods as well as on the Applicant’s websites at and and in its marketing activities. It also has been used in third party media discussion of the Applicant.
· A2MC has brought proceedings, or threatens to bring proceedings, against other dairy producers who use the term ‘A2 protein’ in a misleading way, such as ‘contains A2 protein’ in circumstances where the product offered also contains A1 protein.
I note that the Massasso Declaration contains no documentary evidence of use of the Trade Mark on any of the Applicant’s products other than the Applicant’s A2 Platinum infant formula and milk powder product[1]. The Applicant concedes that the majority of the A2 Platinum products are not the Applicant’s Goods, rather they relate to baby formula and related goods in class 5, though the Applicant did launch its ‘stage 4’ milk powder product in August 2017 and that does fall within the Applicant’s Goods. Furthermore, to the extent that the packaging of the A2 Platinum products display the Trade Mark, it is displayed in a very minor manner (with the primary brand being A2 Platinum), and (although the Trade Mark is clearly marked with a ‘tm’ label) is not clearly used as a mark. An example of the use of the Trade Mark is the use of the phrase ‘is this a True A2tm product?’ following which is an explanation that the product being sold only contains A2 protein. It is not necessary to make a conclusive decision on whether each and every use of the Trade Mark by the Applicant, both on its products and on its website is use of the Trade mark as a trade mark; it is sufficient to note that the nature of the Applicant’s use on its products and website would do very little to distinguish the Applicant’s Goods from the goods and services of other traders.
[1] and in reference to bull semen and genetic testing services however this use is so remote to the Applicant’s Goods that it merits no further discussion.
The Clarke 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 Trade Mark is not a description of the product or the composition as there is no one chemical called A2.
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated a ground of opposition under s 41 of the Act. The onus of proof in an opposition rests upon the Opponent.[2] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[3] The date at which the rights of the parties are to be determined is 9 February 2016, being the filing date of the application (‘the relevant date’).[4]
Discussion
[2] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[3] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [ 2015] FCAFC 156, [133].
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.
Section 41
Section 41 of the Act is set out below:
41 – Trade Mark not distinguishing applicant’s goods or services
(1)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2)A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3)This subsection applies to a trade mark if:
(a)the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4)This subsection applies to a trade mark if:
(a)the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b)the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i)the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii)the use, or intended use, of the trade mark by the applicant;
(iii)any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a)the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b)the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by theWith respect to s 41 it is appropriate to discuss the ‘presumption of registrability’. As was explained by the Hearing Officer in Unilever plc v Beiersdorf AG:
Section 33 of the Act states that the Registrar must accept an application unless satisfied that it has not been made in accordance with the Act, (which is not relevant here), or that there are grounds under the Act for rejecting it. In this regard s 33 embodies what is often referred to as a ‘presumption of registrability.’ As was explained in Blount Inc v Registrar of Trade Marks[5] (‘Oregon’), however, prior to the [Intellectual Property Laws Amendment (Raising the Bar) Act 2012 (“the Amending Act”)] ss 41(5) and (6) as they then were, (which essentially correspond to current ss 41(4) and (3) respectively), effectively shifted the onus onto an applicant. Section 41 was thus amended to address that inconsistency, with the Explanatory Memorandum to the Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 (‘the EM’) stating at page 146:
[5] (1998) 40 IPR 498, 505.
The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. … The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.
The Amending Act was not however intended to alter the relevant standard for registrability. In this regard the EM goes on to state (also at page 146):
Note that while the amendment [to s 41] ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.
The amendments are not meant to alter the key concepts of “inherently adapted to distinguish”, “capable of distinguishing” and “does or will distinguish”. The judicial tests for these terms are settled and the amendments are not intended to change the legal concept of a trade mark distinguishing the applicant’s goods or services from others.
Branson J’s analysis at 504 in Oregon of the operation of s 41 as it stood prior to the Amending Act, as paraphrased below, also remains apt in relation to the amended section:
Having taken [the extent of inherent adaptation] into account, it is theoretically open to [me] to conclude:
(a) that the [Trade Mark] is inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons and capable, on that basis alone, of so distinguishing the [Applicant’s Services]; [that is, neither s 41(3) nor s 41(4) applies] or
(b) that the [Trade Mark] is not to any extent inherently adapted to distinguish the [Applicant’s Services] from the goods or services of other persons; [that is, s 41(3) applies] or
(c) that the [Trade Mark] is to some extent inherently adapted to distinguish the [Claimed Goods] from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the [Applicant’s Services]. [that is, s 41(4) applies][6]
[6] [2017] ATMO 25, [38]-[40].
I note for completeness that the presumption of registrability also applies at the opposition stage and in an appeal under s 56 of the Act[7].
[7] Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [27], quoting Pfizer Products Inc v Karam (2006) 70 IPR 59, 602.
Paraphrasing what the same Hearing Officer said in Pacific Magazines Pty Ltd v Bauer Consumer Media Ltd[8]:
As mentioned in paragraph [13] above the Opponent bears the onus of establishing its s 41 ground of opposition. However, its onus is effectively limited to satisfying me that the [Trade] Mark is not sufficiently adapted to distinguish the Applicant’s Goods as to qualify for registration on that basis alone, being the issue addressed in particular by s 41(3) [as it stood prior to the Amending Act.][9]
[8] [2015] ATMO 69 at [16]. I have in the main also retained the Hearing Officer’s original footnotes.
[9] See Sports Warehouse, Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300, [26]-[29], [40] for a full discussion on this point.
In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd, the Full Court summarised the principles in respect of s 41 as follows:
(1) In deciding whether or not a trade mark is capable of distinguishing the designated services from the services of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).
(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks (“Clark Equipment”) [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.
(3) The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at 514.
(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Limited v Modena Trading Pty Limited (“Cantarella”) [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.
(5) The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].
(6) In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].
(7) In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].
(8) Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].
(9) Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].
(10) In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].
(11) Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].
(12) The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].[10]
[10] [2017] FCAFC 56 at [236].
The ground based on s 41 of the Act is particularised in the SGP as follows:
1)The Opposed Trade Mark contains the elements “True” and “A2”
a.The word TRUE means, amongst other things “real” or “genuine”; and
b.The element A2 refers to a type of protein found in milk, being A2 beta-casein protein
2)The ordinary signification of the words TRUE A2 to any person concerned with goods of the type claimed under the Opposed Application would be to indicate a component, characteristic or a quality of the goods.
3)Other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use TRUE A2 in connection with the goods covered by the Opposed Application to indicate a component, characteristic or a quality of their goods relating to A2 beta-casein protein.
4)Following from the above:
a.The Opposed Trade Mark is not to any extent inherently adapted to distinguish the relevant goods from the goods of other persons; and
b.The Applicant has not used the Opposed Trade Mark before the filing date of the Opposed Application to such an extent that the trade mark does in fact distinguish the designated goods as being those of the Applicant.
5)In the alternative, if the Opposed Trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the relevant goods from the goods of other persons, the Opposed Trade Mark does not and will not distinguish the relevant goods as being those of the Applicant, having regard to the combined effect of the following:
a.The very limited extent to which the Opposed Trade Mark is inherently adapted to distinguish the relevant goods from the goods of other persons;
b.The use, or intended use, of the Opposed Trade Mark by the Applicant has not been sufficient to show that the Opposed Trade Mark does or will distinguish the goods of the Applicant from those of other persons;
c.There are no other circumstances indicating that the Opposed Trade Mark does or will distinguish the goods of the Applicant from those of other persons.
The Opponent submits that the Trade Mark, in the market for the Applicant’s Goods, operates to describe milk products that do not contain both the A1 and A2 protein, but rather contain the A2 protein only. It submits that the Applicant’s position, that the Trade Mark is not descriptive because an accurate description of the Applicant’s products is A1 free milk, does not reflect the understanding in the market. As such there is little doubt that other traders, seeking to supply milk that contains the A2 protein only, would want to use the Trade Mark and hence it is not to any extent inherently adapted to distinguish the Applicant’s Goods.
The Opponent notes the decision in A2 Corporation Ltd[11] in which the delegate refused registration of the Trade Mark in respect of class 5 goods and class 44 services involving animal breeding on the basis of s 41. It identifies several examples of use of ‘A2’ by dairy milk traders and the desire of those traders to show that their product is genuine or natural. Finally it submits that much of the EIA does not show use of the Trade Mark at all, or use as a Trade Mark in a particularly significant manner. Indeed, much of the use by the Applicant (both on its website and in its advertisements) of the Trade Mark is for a descriptive purpose or to certify – that the Applicant’s product is ‘True A2’ because it genuinely does not contain the A1 protein.
[11] [2014] ATMO 94.
The Applicant’s Submissions state that the Trade Mark, taken as a whole, has no meaning by itself or in relation to the Applicant’s Goods and has never been used by any entity other than A2MC. In particular the use of ‘true’ appended to A2 is unusual and creates visual and aural distinctiveness. It states that the defining feature of the Applicant’s products is the absence of the A1 beta-casein protein and that the term A2 is not an accepted descriptor for goods which do not contain the A1 beta-casein protein; indeed, there is no scientific need to use A2 for this purpose.
The Applicant, in the oral hearing, extensively canvassed the Opponent’s evidence of use of the word ‘A2’ combined with descriptors such as true, genuine and pure and submits that this evidence shows little desire of traders to use the Trade Mark; rather it shows that there are numerous ways of traders to indicate to the public that their goods do not contain the A1 beta-casein protein. The Trade Mark, the Applicant submits, is an invented phrase, like the phase in ‘Tub Happy’[12] and should be, by analogy, treated as distinctive.
[12] Mark Foy’s Ltd v Davies Coop and Co Ltd [1956] HCA 41; (1956) 95 CLR 190.
Furthermore, the Applicant submits that in the event the delegate finds that the mark is not sufficiently inherently adapted to distinguish, that it has enjoyed use to such an extent that it does distinguish the Applicant’s Goods. The use of the Trade Mark has been by itself or in a limited stylized form on the Applicant’s website and on its very popular and successful range of infant formula (and now toddler milk drink). Finally, the Applicant notes that it is the owner of numerous other marks that contain the elements ‘A2’ and ‘true’, both in Australia and around the world.
My first step is to determine the extent to which the Trade Mark is inherently adapted to distinguish the Applicant’s Goods from the goods or services of other persons. It is therefore necessary to consider the ordinary signification of the Trade Mark from the perspective of ‘any person in Australia concerned with the goods or services to which the trade mark is to be applied’.[13]
[13] Cantarella at [70].
I note the Applicant’s submissions that the Trade Mark is not used within the scientific industry to describe milk products that do not contain the A1 beta-casein protein. That may be correct, however in considering s 41, I must look at it from the point of view of the public[14]. I find the Opponent’s evidence of the meaning of the term ‘A2’ in the market for the Applicant’s Goods, being the general public, persuasive. In particular I note the evidence of the Macquarie Dictionary that ‘A2 milk’ is ‘milk which contains only A2 beta-casein proteins, thought to be less allergenic than milk which contains A1 proteins’, the similar definition used by the Dieticians Association, the evidence of the use of the term A2 in the media to describe milk which contains only A2 beta-casein proteins, the evidence of the Opponent showing use of the term A2 in the market by other traders for the purpose of purporting to describe milk products that do not contain the A1 beta-casein protein and indeed the Applicant’s use of the Trade Mark itself as a means of certifying that its products do not contain the A1 beta-casein protein. While this meaning of ‘A2’ may not be scientifically accurate, it does have a clear meaning in the market.
[14] Cantarella, [59].
The word ‘true’ operates simply to reinforce or emphasise the meaning of ‘A2’, namely that the product does not contain A1 beta-casein protein. I find that, with respect to the general public, the ordinary signification of the Trade Mark (in respect of the Applicant’s Goods) is that those goods do not contain A1 beta-casein protein. This is not a conclusion that requires a particular search for meaning[15], rather it is reached by applying the commonly understood meaning of ‘true’ in reference to the characteristic, being ‘A2’.
[15] Per Mark Foy’s Ltd v Davies Coop and Co Ltd [1956] HCA 41; (1956) 95 CLR 190.
Given the ordinary signification of the Trade Mark in respect of the Applicant’s Goods I consider it likely that other traders will think of or desire to use the Trade Mark, or something closely resembling it, in respect of the Applicant’s Goods. I do not accept the Applicant’s Submissions that such use could only be with improper motive. While the Applicant’s competitors may have in the past improperly used ‘A2’ to describe products that are not free of the A1 beta-casein protein (and I make no conclusion in respect of the claims made in the EIA regarding the existence of such conduct), this does not preclude the desire to use it in the future for its ordinary signification. Furthermore it is not sufficient to review the examples of use provided in the EIS, and state that because they don’t show use as a trade mark or are not use by a trader or are in different jurisdictions, there is no likelihood that traders would desire to use the Trade Mark. Rather the EIS establishes the ordinary signification of the Trade Mark. It also establishes the desire of traders in the market for the Applicant’s Goods to describe their products as genuinely free of the A1 beta-casein protein. Given the ordinary signification of the Trade Mark, it follows that traders will think of or desire to use it, or a mark nearly resembling it, in relation to the Applicant’s Goods.
I find that the Trade Mark is, to some extent, but not sufficiently, inherently adapted to distinguish the Applicant’s Goods from the goods of other persons. In my opinion the Trade Mark has some inherent adaption to distinguish arising from the addition of the word ‘true’, such that it does not fall within s 41(3) of the Act.
I must now consider whether or not the Trade Mark does or will distinguish the Applicant’s Goods having regard to the combined effect of the following:
·the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
·the use, or intended use, of the trade mark by the applicant;
·any other circumstances.
Thus, it is necessary to consider the Applicant’s evidence of use (and intended use) of the Trade Mark as well as the other circumstances set out in the Applicant’s Submissions.
As noted in the Applicant’s Submissions, the question of acquired distinctiveness is entirely one of fact. The question is whether, despite the respective matters set out in s 41(4) of the Act, I am satisfied that the Trade Mark does not and will not distinguish the Applicant’s Goods.
With respect to the Applicant’s evidence of use of the Trade Mark, I note that there is no documentary evidence of any use of the Trade Mark at the relevant date in respect of any product other than the Applicant’s A2 Platinum infant formula, which (although not a requirement under s41(4)(b)(ii)) is not use in respect of the Applicant’s Goods. The A2 Platinum product primarily uses the A2 Platinum trade mark, as discussed in paragraph 16 above. To the extent that the packaging of the A2 Platinum product displays the Trade Mark, it is displayed in a very minor manner and is not clearly used as a badge of origin of the Applicant’s Goods. Rather it is arguable that the Trade Mark is used for its ordinary signification, that is that the product in question does not contain A1 beta-casein protein. While the sales and presence of the A2 Platinum product in the Australian market are considerable, I am not persuaded that the use of the Trade Mark on the goods (or indeed the other identified uses of the Trade Mark on the Opponent’s Website and in respect of other products unconnected the Applicant’s Goods) positively impacts the Trade Mark’s ability to distinguish the Applicant’s Goods from those of third parties. Given the limited manner in which the Trade Mark is used on the A2 Platinum product I am not persuaded that any future use of the Trade Mark on the ‘stage 4’ product launched in 2017 (that is part of the Applicant’s Goods) makes any difference to this conclusion.
Equally I am not satisfied that Applicant’s success in registering the Trade Mark in other jurisdictions, and similar marks on the Register is sufficiently compelling. I reach the same conclusion in respect of the arguments made on both sides as to the state of the Register more generally. I note the usual principles expounded in cases such as British Sugar Plc v James Robertson & Sons[16], Ocean Spray Cranberries v Registrar of Trade Marks[17] and KAMYR Inc, Re[18] including that the state of the Register does not indicate market realities, that although consistency is desirable the Registrar is not bound to perpetuate an error on the Register and that some, if not all, of these registrations were not opposed and never underwent the ‘closer adversarial scrutiny’ referred to by French J in Registrar of Trade Marks v Woolworths Limited.[19]
[16] [1996] RPC 281 [305].
[17] [2000] FCA 177; (2000) 47 IPR 579, [35].
[18] See KAMYR Inc, Re [1996] ATMO 14.
[19] [1999] FCAFC 1020l; (1999) 45 IPR 411 [377].
Taking into account the limited inherent adaption to distinguish, the other circumstances, such as the overseas registrations and the manner in which the Trade Mark has been used in Australia, even given the existence of the overseas registrations, I am satisfied that the Trade Mark does not and will not distinguish the Applicant’s Goods from those goods of other traders. Section 41(4) of the Act applies and the application to register the Trade Mark must be rejected.
Decision
I have found the Opponent has established the ground of opposition pursuant to s 41 of the Act. As a Delegate of the Registrar I accordingly refuse to register the Trade Mark.
Costs
The Opponent has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Applicant under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
3 June 2019
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