Trade Mark News & Information

Trademark Lawyer Sydney – Federal Court – MOTHERSKY Appeal

Energy Beverages LLC v Cantarella Bros Pty Ltd [2022] FCA 113 (18 February 2022)

This concerned three unsuccessful appeals by Energy Beverages.

The first two appeals were from Registrar’s decisions directing removal of its MOTHER LOADED ICED COFFEE  and MOTHERLAND trade mark registrations on the ground of non-use.

The third appeal was from the Registrar’s decision rejecting its opposition to registration by Cantarella of the MOTHERSKY trade mark.

MOTHER LOADED ICED COFFEE non-use

Registrar

Before the Registrar, Energy Beverages was unsuccessful in its opposition to an application for removal of its trademark registration for MOTHER LOADED ICE COFFEE, alleging non-use during the 3 years period ending on 13 January 2018.

The trademark registration dated from 8 February 2011 and covered various goods in classes 29 and 30.

Rights to this trademark (and other MOTHER marks) were assigned on 12 June 2015 from The Coca-Cola Company to the opponent.

The opponent conceded the MOTHER LOADED ICED COFFEE trade mark had not been used in Australia, but relied on use since 2007 and reputation of its MOTHER marks for various energy drinks and exercise of discretion to retain this trademark registration at least for a restricted range of goods. However, the delegate was not satisfied that it is reasonable to retain this mark on the register for any of the registered goods.

The delegate noted that the opponent’s reputation was limited to energy drinks and in Frucor Beverages Limited v The Coca-Cola Company[2018] FCA 993, Yates J found that ‘[e]nergy drinks are accepted in the beverage industry as a separate and distinct category of non-alcoholic drink’ and are ‘presented to the public as a stand-alone drinks category’. Hence, the opponent’s reputation in this category did not have a significant bearing on the exercise of discretion in the context of any of the registered goods.

Appeal

Again, Energy Beverages conceded it had not used the MOTHER LOADED ICED COFFEE mark during the relevant period and so it was liable for removal under the s92(4)(b) ground.

Significantly, Halley J went on to consider the intention to use this mark at the filing (8 February 2011) under the s92(4)(a) ground and found that Energy Beverages’ predecessor, The Coca-Cola Company (TCCC) did not have an intention in good faith to use the MOTHER LOADED ICED COFFEE mark in relation to the registered goods. The filing of the trade mark application by TCCC is only prima facie evidence of an intention to use the mark. His Honour was satisfied the absence of any use of the mark in the 10 years since it was registered, or any launch of an iced coffee beverage by Energy Beverages, gave rise to a strong inference that no good faith intention to use the mark existed at the date of the registration. The failure of Energy Beverages to produce evidence that TCCC or it ever had an intention to use the mark was significant.

Halley J also found there were insufficient facts and circumstances to warrant the exercise of discretion.

MOTHERLAND non-use

Appeal

Before the Registrar, Energy Beverages was unsuccessful in its opposition to an application for removal of its trademark registration for MOTHERLAND alleging no good faith use in relation to the registered goods for the 3 years period ending on 12 January 2019.

The trademark registration dated from 11 February 2010 and covered energy drinks and other non-alcoholic beverage related products in class 32.

The evidence disclosed use of the MOTHERLAND mark at least during 2010 and 2011 by the opponent’s predecessor in business, but the bulk of the evidence during the relevant period related to use of the MOTHER mark.

The delegate considered the ability to access, during the relevant period, a historical advertisement or promotional video could not be relied upon to show use of the mark during the relevant period. The WICKED case was distinguished on the basis that the opponent had not offered, and a consumer could not purchase, relevant goods bearing the MOTHERLAND trade mark during the relevant period.

The extensive use and reputation of the MOTHER mark could not be relied upon, as part of the exercise of discretion, to justify leaving the MOTHERLAND mark on the Register.

Appeal

Halley J  found that Energy Beverages had not used the MOTHERLAND trade mark in relation to the registered goods. His Honour agreed with the delegate’s assessment of the evidence relied upon by Energy Beverages as being merely a passive historical snapshot of a marketing campaign no longer being used to promote or sell the registered goods. However, the mark being used was the MOTHER mark and not MOTHERLAND.

Halley J also found there were insufficient facts and circumstances to warrant the exercise of discretion.

MOTHERSKY trade mark application

Before the Registrar, Energy Beverages was unsuccessful in its opposition to trademark registration by Cantarella of MOTHERSKY filed on 11 January 2017 for coffee and chocolate in class 30 and coffee roasting and grinding in class 40.

The opponent relied on grounds under ss 42(b), 44 and 60, but failed to establish any ground.

Essentially, the opponent relied on use and registration of its MOTHER trade marks. Rights to these trade marks were assigned on 12 June 2015 from The Coco-Cola Company to the opponent. The MOTHER brand has been used in Australia since 2007 in relation to energy drinks.

Under s44, the opponent referred to its prior MOTHER trademark registrations in classes 32 and 33, as well as registrations for MOTHERLAND in class 32 and MOTHER LOADED ICED COFFEE in class 30. However, the delegate did not consider the applied for MOTHERSKY mark to be deceptively similar to any of these registered marks.

Under s60, the delegate was satisfied the evidence demonstrated the opponent’s MOTHER trade marks had acquired a substantial Australian reputation for energy drinks. However, this was a case where the opponent was a victim of its own success, particularly as the MOTHER mark was always rendered in gothic black and white script and used only for energy drinks. Consequently, the delegate was not satisfied that use of the MOTHERSKY trade mark would be likely to deceive or cause confusion.

Appeal

Halley J found the applied for MOTHERSKY trade mark was not substantially identical with or deceptively similar to Energy Beverages’ MOTHER marks (or its MOTHERLAND or MOTHER LOADED ICED COFFEE mark); so the s44 ground of opposition failed.

Given his Honour’s findings that the MOTHERLAND and MOTHER LOADED ICED COFFEE trade mark registrations were to be removed for non-use, it was not strictly necessary for these marks to be included in the comparison. His Honour also  made some observations on the similarity of goods issue.

His Honour also considered Energy Beverages’ reputation in its MOTHER marks was deep but narrowly focused on energy drinks and the rendering of MOTHER in gothic script was a significant factor. This reputation did not give rise to Cantarella’s use of the MOTHERSKY trade mark being likely to deceive or cause confusion, or being misleading or deceptive under the Australian Consumer Law; so the s60 and s42(b) grounds of opposition also failed.

His Honour observed that:  (1) the markets for coffee and ready to drink products, such as iced coffee, iced tea and cold brewed coffee sold in cans, are different; (2)  there is no material interface between energy drinks and coffee or significant overlap between the marketing and sale of energy drinks and coffee; and (3) the evidence did not establish that the market in which energy drinks is supplied, at least in Australia, extends to other ready to drink products such as iced coffee, iced tea and cold brewed coffee sold in cans.