The primary judge's decision
79 EB's opposition to registration of the MOTHERSKY mark was based on three grounds.
80 First, EB contended that MOTHERSKY should not be registered on the basis of s 44(1) of the Act which provides:
(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.
81 EB contended that MOTHERSKY was deceptively similar to its earlier registered marks MOTHER (Trade Mark Nos. 1230388 (the 388 mark) and 1364858 (the 858 mark)), MOTHERLAND, and MOTHER LOADED ICED COFFEE (Trade Mark No. 1408011 (the 011 mark)). In the present appeal, EB does not contend that the primary judge erred in the conclusion he reached on the application of s 44(1) taking into account the 858 mark. It also does not contest the findings that the primary judge made in respect of the 011 mark. Its appeal is limited to a comparison between MOTHERSKY, and the 388 mark (MOTHER) and the MOTHERLAND mark. The 388 mark is registered for the following goods in Class 32:
Non-alcoholic beverages; drinking waters, flavoured waters, mineral and aerated waters; carbonated soft drinks, energy drinks and sports drinks; fruit drinks and juices; syrups, concentrates and powders for making beverages including syrups, concentrates and powders for making mineral and aerated waters, carbonated soft drinks, energy drinks, sports drinks, fruit drinks and juices.
82 This is the same as the specification for the MOTHERLAND registration.
83 The primary judge found that the goods covered by Cantarella's application for registration of MOTHERSKY (coffee, coffee beans and chocolate), which was made on 11 January 2017 (the MOTHERSKY application) and the goods covered by the cited registrations, were not "similar goods" for the purposes of s 44(1). In this connection, s 14(1) of the Act provides:
(1) For the purposes of this Act, goods are similar to other goods:
(a) if they are the same as the other goods; or
(b) if they are of the same description as that of the other goods.
84 The primary judge treated the question before him as whether the goods of the MOTHERSKY application and the goods of the cited registrations were goods "of the same description", having regard to the principles of trade mark law. So far as the 388 mark and the MOTHERLAND mark are concerned, the primary judge focused on "carbonated soft drinks, energy drinks and sports drinks" and "non-alcoholic beverages", and the syrups, concentrates and powders for making them. His Honour referred to these as the first category goods. His Honour also identified a second category of goods, but his Honour's analysis in respect of these goods is not relevant to EB's proposed appeal.
85 As to the first category goods, the primary judge found that, at a significant level of abstraction, these goods and, at least, "coffee", could both be characterised as "non-alcoholic beverages". However, his Honour reasoned that this characterisation ignored the fundamentally different taste and flavour of carbonated soft drinks, energy drinks and sports drinks, the manner in which they are presented for sale and consumed, and the differences in form, function and origin between syrups, concentrates and powders, and coffee beans, ground coffee and coffee in capsule form. The primary judge did not accept that the evidence directed at distribution channels and to the extension by Cantarella and its competitors of their "coffee" marks to other products was determinative.
86 As to the question of trade mark comparison, the primary judge found that the impression hypothetically recalled of the cited registrations was not sufficient to give rise to a resemblance between MOTHERSKY and those marks, such as would be likely to deceive or cause confusion. The primary judge, at J[320] - [330], gave detailed reasons for coming to that conclusion.
87 The primary judge found that there were material visual and aural differences between MOTHERSKY and the cited marks, as well as differences in what the marks connote.
88 The primary judge reasoned that the word "mother" was retained in the registration of MOTHER as an established and well-known word. On the other hand, MOTHERSKY was not an established and well-known word.
89 The primary judge reasoned that the differences between MOTHERSKY and the cited marks were more pronounced than other marks that have been found to be deceptively similar, notwithstanding that the differences between them would be readily apparent to a consumer.
90 The primary judge was satisfied that the overwhelming emphasis and impression conveyed by the cited marks was on the word "mother" as a single, easily recognisable word with an established meaning. The primary judge found that, unlike the cited marks, MOTHERSKY comprises a single invented word, where "mother" is absorbed within the mark and the emphasis, and impression conveyed, is not on the word "mother".
91 The primary judge found that, for each of the cited marks, the emphasis, aurally, was on "mother", whereas for MOTHERSKY the emphasis was more on the second syllable. The primary judge found, further, that MOTHERSKY did not exhibit a strong phonetic similarity with the cited marks, such that consumers of ordinary memory and intelligence, with an imperfect recollection, might consider the marks to be related.
92 The primary judge found that the word "mother" is a commonly used word. When it is combined with other words that are descriptive of services or goods, it conveys distinct and different meanings. For example, the addition of the words "loaded iced coffee" in the MOTHER LOADED ICED COFFEE mark acted as a qualifier or variant to "mother", and described a specific type of product. However, the primary judge did not think that the addition of "sky" in MOTHERSKY acted as a qualifier or variant to "mother". MOTHERSKY did not describe a specific type of product or bear any relationship, in his Honour's view, to the other MOTHER-derivatives in EB's stable of trade marks.
93 Further, the primary judge did not accept that there were any "obvious conceptual synergies" between MOTHERLAND and MOTHERSKY. The primary judge reasoned that MOTHERLAND evokes an impression of a native country or homeland, neither of which meanings are conveyed by MOTHERSKY. MOTHERSKY was a highly distinctive novel word with no established meaning.
94 Before the primary judge, EB also based its opposition on the grounds provided by ss 42(b) and 60 of the Act - the second and third of the three grounds referred to. In the present application, EB does not seek to challenge the primary judge's adverse finding in relation to the application of s 42(b). However, EB does contend that the primary judge erred in his findings in relation to the application of the ground under s 60.
95 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.
96 Earlier in his reasons, the primary judge gave detailed consideration to the evidence before him, and reached a number of broad conclusions. At J[146] - [148], the primary judge said:
146 As explained above, EB approached the market issue by seeking to establish the existence of what it described as a "material interface" between first, energy drinks and other products, including coffee, and second, between "pure coffee" and other products.
147 The effect of this approach was to introduce into the evaluation a very broad range of beverage products that sat between the MOTHER energy drinks sold by EB and the MOTHERSKY pure coffee products sold by Cantarella. These products included RTD beverages such as iced coffee, iced tea and cold brew coffee products sold in cans. The introduction of these "intermediate products" ultimately had a tendency to distract from, rather than assist in, the determination of the likelihood of deception or confusion and the extent of the reputation that EB had established in its MOTHER marks.
148 At times in the course of its submissions Cantarella sought to distinguish between "pure coffee" and "instant coffee", but the principal distinction drawn by Cantarella and the subject of the most attention by the parties was the distinction between "pure coffee" and what might be described as "coffee flavoured milk" and other coffee flavoured RTD beverages. EB's expansive taxonomical approach was to include such RTD products within the concept of coffee.
97 The primary judge found that the evidence before him provided only limited support for the "material interface" for which EB contended.
98 In this connection, the primary judge found, firstly, that the need for product innovation to remain competitive in the energy drink market could not itself give rise to an expectation on the part of consumers that EB could be expected to diversify its product offering to include MOTHER coffee beans and ground coffee. Rather, consumers could expect diversification in the presentation, packaging and flavour of energy drinks, rather than a diversification into products outside the ready-to-drink (RTD) range of product offerings.
99 The primary judge found, secondly, that the evidence relied upon by EB to establish that energy drink companies considered coffee drink companies to be direct competitors included certain SEC filings. However, those findings did not suggest that energy drink companies identified their competitors as extending to pure coffee suppliers. Further, the primary judge cautioned that the competitive landscape in Australia cannot be assumed to be materially the same as in the United States of America.
100 At J[156] - [157], the primary judge said:
156 I address below the specific market and reputational issues raised by EB and Cantarella in the course of addressing the matters relied upon by EB in these appeals. In summary, for the reasons that I develop below in the course of addressing the matters relied upon by EB in these appeals, I am not satisfied that energy drink companies "often" position themselves as a direct alternative to coffee. Nor am I satisfied that the fact that some coffee beverage manufacturers, other than Cantarella, may file for trade mark coverage for "energy drinks" is of any particular significance to the question of whether the use of the MOTHERSKY mark by Cantarella is likely to lead to consumers being deceived or confused.
157 It is sufficient to make the following general observations at this point. First, I am satisfied that the markets for coffee and RTD products, such as iced coffee, iced tea and cold brewed coffee sold in cans, are different. Second, I am not persuaded that there is any material interface between energy drinks and coffee or significant overlap between the marketing and sale of energy drinks and coffee. Third, I am not satisfied that the evidence adduced in the appeals establishes that the market in which energy drinks is supplied, at least in Australia, extends to other RTD products such as iced coffee, iced tea and cold brewed coffee sold in cans.
101 For the purposes of s 60 of the Act, the primary judge accepted Cantarella's contention that EB's reputation in the MOTHER mark was "deep but narrowly focused".
102 Based on the evidence before him, the primary judge also accepted the delegate's summation that:
[T]he evidence only shows use on energy drinks; this is not a situation where the Opponent uses its trade marks (or parts of the trade marks) on other beverages or foodstuffs which might induce a consumer into believing that the Opponent has expanded into chocolate or coffee. The strength of the Opponent's reputation in the Mother Trade Marks in relation to energy drinks reduces the likelihood of confusion or deception from the use of the Trade Mark on, or in relation to, the Applicant's Goods and Services to something less than 'real and tangible'.
103 The primary judge made a number of findings in relation to the reputation in MOTHER as a trade mark, and the likelihood of deception or confusion resulting from potential use of the MOTHERSKY mark:
(a) The primary judge accepted that EB's MOTHER mark had acquired an extensive reputation in Australia in relation to energy drinks at the priority date of the MOTHERSKY application.
(b) The primary judge did not accept that any similarities between prompts and taglines used in relation to energy drinks by EB and coffee companies in promoting or marketing their products would give rise to any real or tangible danger of confusion. As to this the primary judge said at J[353]:
At a general level, both energy drinks and coffee might be thought to be stimulants. Energy drinks may typically contain at least some quantity of caffeine; coffee may, at times, be marketed as some form of "wake up" or "pick up"; and both may be sold through the same distribution channels. However, caffeine cannot simply be equated with coffee and references to the presence of caffeine in both coffee and energy drinks cannot in my view give rise to any real or tangible danger of confusion in the minds of consumers.
(c) The primary judge found that EB's reputation included the use of MOTHER in combination with other words, taglines and slogans, but only in the context of the sale of energy drinks. The sublines or variants of the original MOTHER branded energy drink served to differentiate flavours and perceived attributes of those drinks, but in each case the word MOTHER remained a prominent brand and was used without any prefix or suffix.
(d) The depiction of the MOTHER mark with its stylised gothic print on EB's energy drinks and in its promotional and advertising material was fundamental to the use of the MOTHER mark as a trade mark.
(e) To the extent that Cantarella and other coffee companies had expanded the use of their brands to products other than coffee, these products did not give rise to the likelihood of deception or confusion because they were different products in different markets. EB's reputation in the MOTHER brand was one acquired exclusively for energy drinks. EB had not sought to expand the use of MOTHER to products other than energy drinks.
(f) MOTHERSKY shares the element "mother" but only as part of a composite invented word with no established meaning. Although the notional use of that mark would include ways in which the "mother" element is emphasised, the primary judge was not satisfied that there was any reasonable basis for that concern. To date, Cantarella had not done so and the primary judge was satisfied that there would be no commercial rationale for it to do so.
(g) The primary judge recognised that any assessment of the notional use of MOTHERSKY as a trade mark must take into account the full range of use in relation to "coffee". The primary judge concluded, however, that there was a fundamental distinction between "coffee" and "energy drinks" that is not materially diminished by the existence of RTD and pre-packaged coffee beverages such as iced coffee, cold brew coffee, and "coffee-in-a-can" products.
(h) The primary judge found that the sale of energy drinks and coffee being sold through common distribution channels was of little probative value. Supermarkets, retail outlets and convenience stores offer a broad range of products for sale to consumers. The more relevant enquiry was how the products are displayed for sale, their brand image, the means by which they are promoted and advertised for sale, and to whom they are marketed. The primary judge found on the evidence before him that coffee and energy drinks are displayed for sale in different ways and generally in different areas of supermarkets and convenience stores.
(i) The primary judge found that the marketing and promotion of energy drinks and coffee is fundamentally different. They have different brand images and are promoted and marketed to different classes of consumers in different ways.
(j) The primary judge found that the extent of EB's success in creating such a powerful reputation in the MOTHER marks in connection with energy drinks reduces the likelihood of confusion or deception from the use of the MOTHERSKY mark in relation to Cantarella's goods and services to something less than real or tangible.
104 For these reasons, the primary judge was not satisfied that EB had established that the use of the MOTHERSKY mark would be likely to deceive or cause confusion due to the reputation of the MOTHER marks.