A series of trademark disputes involving coffee products provide important lessons for companies seeking to register trademarks for consumer goods and services. Gavin Adkins, Jacqueline Simkin and Amy Foster discuss three decisions involving Energy Beverages and Cantarella Bros.
Energy Drinks LLC (Energy drinks) owns a number of trademarks for its energy drinks, including the word marks “MOTHER”, “MOTHER LOADED ICED COFFEE” and “MOTHERLAND” (the Parent brands). Trademarks have been registered for products such as energy drinks, coffee and milk-based drinks as well as chocolate, ice cream and tea.
In 2017, Cantarella Bros Pty Ltd (Cantarelle) has applied for registration of “MOTHERSKY” for various coffee products and related services in support of a new line of roasted and pre-ground coffee beans. This resulted in the following decisions:
Energy Beverages opposed the registration of MOTHERSKY claiming that it is deceptively similar to one or more of the parent marks pursuant to Section 44 of the Trade Marks Act 1995 (Cth).
Cantarella has applied for MOTHERSKY registration for Class 30 products, including coffee, coffee beans and chocolate. MOTHER and MOTHERLAND trademarks are registered in Class 32 for beverages, including energy drinks, soft drinks and fruit drinks. Judge Halley distinguished this category of goods from coffee, coffee beans and chocolate by the way customers perceive and purchase these products. In particular, His Honor considered that MOTHERSKY products are either displayed by baristas in cafes or available for purchase in the tea and coffee aisle of a supermarket. Energy drinks are purchased through various channels and are available in the soft drink aisle or in the refrigerators of a supermarket or convenience store along with other ready-to-drink beverages. Judge Halley pointed out that the customer experience with MOTHERSKY products would be very different and would typically occur in a cafe or restaurant environment.
His Honor also considered that the distinct manufacturing processes involved in the production of pure coffee products, particularly roasting and grinding, have no parallel with ready-to-drink beverages like energy drinks. Her Honor argued that the categories could not be considered “like goods” because there was no significant overlap in the marketing, channels of trade or sales of coffee and energy drinks.
Both the MOTHER LOADED ICED COFFEE registration and the MOTHERSKY app apply to Class 30 products, including coffee and chocolate products. Judge Halley held that only products sold under the trademark MOTHER LOADED ICED COFFEE could risk being confused by consumers if the marks were deceptively similar.
Likely to mislead or confuse
Energy Beverages has sought to build on its extensive reputation in parent brands to argue that there is a real risk that consumers will be confused as to the origin of Cantarella’s MOTHERSKY products. Judge Halley limited Energy Beverages’ reputation to energy drinks only. It did not apply to other types of drinks. His Honor felt that the patron’s association of energy drinks with the word MOTHER was further limited by the stylized gothic font, not the word alone. The memory of the stylized MOTHER device and the fundamentally different markets of the two brands lead Halley J to conclude that there was no tangible threat of deception.
In any event, His Honor did not consider MOTHERSKY to be deceptively similar to any of the parent marks. The MOTHERSKY brand exists in the abstract; it has a very different meaning from the ordinary word MOTHER. Judge Halley noted that MOTHERLAND has a pre-existing meaning and is not an imaginative word like MOTHERSKY. There is a memorable difference between the ideas conveyed by brands. Additionally, the visual differences of the additional letters between MOTHER and MOTHERSKY prevent confusion in consumers’ imperfect recall.
His Honor considered that the phonetic differences between the impression left by each of the marks MOTHER LOADED ICED COFFEE and MOTHERSKY constituted significant phonetic dissimilarities. The inclusion of MOTHER as one of the four components of the MOTHER LOADED ICED COFFEE brand does not negate the visual dissimilarity of a four-word phrase to a stand-alone word, MOTHERSKY. Judge Halley was not persuaded that there was an overall resemblance between the marks giving rise to a deceptive similarity.
Defense of non-use
Energy Beverages challenged the Registrar’s decision to remove the marks MOTHERLAND and MOTHER LOADED ICED COFFEE from the register. Energy Beverages had registered MOTHER LOADED ICED COFFEE more than ten years prior and had not demonstrated actual use or intention to use the mark during that time. Instead, the company relied on its desire to preserve its ability to innovate in surrounding beverage markets, but was unable to match this desire with any evidence of preparatory steps for the during the relevant period. From this, his honor inferred that Energy Beverages did not intend in good faith to use the mark at the time of filing.
Energy Beverages clearly used its MOTHERLAND brand in a promotional campaign in 2010. A video of the ad is available on YouTube and two users commented in the relevant period (see here). Energy Beverages argued that this was evidence of use of its trademark. His Honor was not convinced that a removed promotion that was inadvertently left online could constitute use, as there was no active or deliberate commercial engagement or promotion of that trademark. His Honor also found that the mark MOTHERLAND was not used as a trademark in the commercial; the focus was on the stylized MOTHER sign, which was the most distinctive element of the brand. The findings of non-use were upheld with reference to the Registrar’s overriding obligation to expunge unused marks from the register.
Businesses may choose to register trademarks for goods and services that are not currently in use for various reasons. However, this decision acts as a warning that:
- the mere search to preserve a possibility of innovating in the future does not amount to a genuine intention to use a mark; and
- use as a mark is not established solely by proof that an old advertisement remains available online.
Energy Beverages has nevertheless filed for leave to appeal the decision to the Full Court of the Federal Court and we will provide a further update if the position changes.