Federal Court resolves ‘legitimate uncertainty’ in uncontested trademark appeals

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Where an appeal of a decision of the Registrar of Trademarks is resolved by the parties, the court may still have to issue judgment if the appeal is not simply withdrawn. In allowing the appeal, the Court may have to decide a series of questions, in particular whether the mark under appeal meets the statutory threshold of distinctiveness.

The a2 Milk Company Limited (a2MC) has obtained trademark registration a2 Milk and TRUE A2 after the Federal Court issued a judgment allowing a2MC’s appeals against successful objections to IP Australia, and ordered that a2MC’s trademarks proceed to registration (The a2 Milk Company Limited v LD&D Australia Pty Ltd [2021] FCA 1515).

The Court’s judgment came in circumstances where the opponent to the registration, a2MC’s competitor, LD&D Australia Pty Ltd (Lion), no longer wanted to continue its opposition after reaching an agreement with a2MC. The parties sought consent orders to finalize the proceedings, including an order for the trademarks to proceed with registration. Because of the public interest relevant to the issue of distinctiveness, the Court was unable to make such orders based solely on the parties’ agreement.

Insufficient agreement between the parties

Had Lion dropped its objections to registration before the Registrar of Trademarks, the way forward would have been clear. The applications of a2MC having been accepted for examination, in the absence of these oppositions, the marks would have been registered.

However, the Registrar of Trademarks concluded that the two a2 Milk and TRUE A2 were unable to distinguish a2MC’s goods from those of other traders, which engaged public interest considerations.

The guidance provided by case law was limited, with only two cases giving rise to a similar set of circumstances. In both of these cases, the public interest concerns were addressed by a letter from the Deputy Registrar of Trademarks indicating that the Registrar had no objection to the rescinded decisions. A letter in the same terms was requested by a2MC, but was not provided. Instead, the Deputy Registrar issued a letter noting the public interest concerns arising from section 41 of the Trade Marks Act 1995 (Cth), noting that the matter was “now within the purview of the court”, and stating that the Registrar was unable to indicate that she had no objection to the decisions being set aside.

“Legitimate uncertainty” on the way forward

The Court accepted that the position taken by the Registrar gave rise to “legitimate uncertainty” as to the way forward. In particular, it was unclear what would happen if the Court did not issue an order requiring the marks to be registered. Judge Bromwich noted that the Deputy Registrar’s letter left open the idea that Lion’s dropped objection under Section 41 “may still have work to do for reasons of public interest, or at least to ‘another way to hinder progress towards registration’.

For the sake of certainty and finality, His Honor granted a2MC’s request that the Court hear the case, even in the absence of an opponent. All trademarks applied for must meet the distinctiveness threshold of section 41 and the Court therefore had to determine, in light of the evidence, whether this threshold had been met.

Marks intrinsically suited to distinguish

While reviewing the substantial body of additional evidence presented to the Court by a2MC, Judge Bromwich also gave the “usual degree of weight” to the two decisions of the Registrar which gave rise to the appeals. In light of the Deputy Registrar’s letter, His Honor noted that the existing submissions of these delegates apparently stood and should not necessarily be set aside simply because of the new evidence that had been filed in the appeals.

After reviewing this evidence and the Registrar’s rulings, the Court concluded that the meaning of “a2” or “A2” did not constitute a description of a2MC’s products, but rather made “an alluding reference to them and their qualities. His Honor went on to note that a “use of A2 by another trader to do more than identify that their product contains bovine beta casein protein A2 would not be properly reasoned and is not a reason to deny the registration of the applicant”.

The Court held that the two marks were inherently suitable enough to distinguish the products of a2MC from the products of other traders and that they should register. Judge Bromwich also noted that the evidence of use by a2MC, both before and after the earlier of the two priority dates, clearly established that the marks would serve to distinguish a2MC’s wares as those of a2MC. This included visual evidence that showed a2 or A2 was present in the market “as a brand, not just a product description”, and detailed lexical evidence on the use of a2 or A2 in the community that showed “overwhelming association with the plaintiff’s goods”.

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