The a2 Milk Company Limited v LD&D Australia Pty Ltd  FCA 1515 (3 December 2021)
Successful appeal by The a2 Milk Company from decisions by the Registrar of Trade Marks, resulting in registration of its trade mark applications for a2 Milk and TRUE A2 filed on 20 July 2015 and 9 February 2016 for milk related products in classes 5 and 29.
LD&D did not want to participate in the appeal and the parties sought consent orders for these trade mark applications to proceed to registration. However, the Registrar declined to issue a letter indicating no objection to the delegates’ decisions being set aside. The Court agreed to consider the evidence that had been filed, receive written submissions and hear any necessary oral submissions, albeit without opposition from the respondent.
Before the Registrar’s delegates, these trade mark application were refused under s41 for insufficient distinctiveness due to A2 being ordinarily used to indicate a bovine beta casein protein in cow’s milk. The a2 Milk mark was not to any extent inherently adapted to distinguish the relevant goods, while the TRUE A2 mark was to some extent, but not sufficiently, inherently adapted to distinguish the applicant’s goods from those of other persons, and the applicant’s usage did not go far enough to distinguish these goods.
The applicant contended that the “a2 Milk” brand, and thus also the “TRUE A2” trade mark, is named for the A2 beta-casein variant, being the most common of that class of variants, but neither “a2”, nor “A2”, as appearing as part of the two trade marks sought to be registered, has any particular meaning in itself. Rather, the applicant contends that the evidence demonstrates that this is at most an allusion to the quality of its products, and does not directly describe the goods.
Bromwich J, rather curiously, proceeded by seemingly disregarding the terms “Milk” and “TRUE” because those terms were not apt to distinguish in themselves and focusing on the meaning of “a2” and “A2” on their own. His Honour concluded, at paragraph 33:
I am satisfied, on the evidence before me and without the benefit of contradictory argument, that a2/A2 are in truth made up, in the sense that the evidence (in a background way) reveals that they have their origin in science. Despite the considered views of the two delegates, which I have taken into account and given due weight, by their own nature, a2/A2 do not directly describe the applicant’s products, but rather make an allusive reference to them and their qualities. A use of A2 by another trader to do more than identify that their product contains the A2 bovine beta-casein protein would not be properly motivated and is no reason to deny the applicant registration. Other traders may properly identify that feature, but are not entitled to exploit the applicant’s brand.
His Honour also commented that:
For completeness, had I fallen short of being satisfied that a2/A2 were sufficiently inherently adapted to distinguish the designated goods as identified in the respective trade mark applications, I would have had little difficultly in the absence of contrary persuasion in excluding the operation of both s 41(3) and s 41(4). There was at least a reasonable extent to which each was inherently adapted to distinguish the goods from those of others, and the evidence clearly established that both the past use prior to the earlier priority date, and the intended continuing use, in combination would operate to distinguish those goods as being those of the applicant, from those of others.
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