The Federal Court has recently dismissed three appeals[1] against Trade Marks Office opposition decisions relating to marks including the word “Mother”. One of these cases involved the question of a lack of intention to use the mark MOTHER LOADED ICED COFFEE in relation to inter alia, flavoured milk.
Despite the fact that:
- the filing of the original application indicated a prima facie intention to use;
- the application was filed by a different company (The Coca-Cola Company – TCCC – and subsequently transferred to the current registered owner Energy Beverages LLC – EB – after the mark was registered); and
- the mark actually included the words ICED COFFEE, being the goods for which registration was sought;,
the Court held that the failure to lead evidence of intention to use by TCCC was significant, and dismissed the appeal against the Office’s decision that there was no intention to use.
The second appeal also involved a non-use application, this time against the mark MOTHERLAND.
In that case the main issue was whether the historical existence of an old advertisement on YouTube constituted sufficient use to defend the registration. The Court held that it did not, on a number of bases, including that the existence of the advertisement online was not in itself sufficient, that the use of the advertisement was not in trade, and that it was not clear where the advertisement had been viewed (whether in Australia or outside Australia). In neither case was the Court prepared to exercise its discretion not to remove the registration.
The third appeal was against the Office’s decision to dismiss EB’s opposition to an application to register the mark MOTHERSKY, by Cantarella, in relation to inter alia, coffee. The Court dismissed the appeal, which included opposition grounds under s.44 based on conflict with registered marks for MOTHER, MOTHER LOADED ICED COFFEE and MOTHERLAND, under s.60 and s.42(b) (contrary to law) based on the reputation of MOTHER for energy drinks.
In dismissing the appeal, the Court held that coffee is not a good of the same description as either flavoured milk (covered by the MOTHER LOADED ICED COFFEE registration) or energy drinks (covered by the MOTHER registration). The Court also held that the mark MOTHERSKY was not deceptively similar to any of the prior registered marks, commenting that MOTHERSKY was conceptually different to all of the prior marks, that it was a single invented word, in which (unlike the prior marks) the emphasis was not on the word MOTHER, and further that SKY did not act as a qualifier to MOTHER.
Consistent with these findings the Court held that although there was a strong reputation in the MOTHER mark in relation to energy drinks, energy drinks and coffee were different goods and there was unlikely to be any confusion.
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[1] Energy Beverages LLC v Cantarella Bros Pty Ltd [2022] FCA 113