Energy Beverages LLC v Cantarella Bros Pty Ltd [2019] ATMO 150


Energy Beverages LLC (“Energy Beverages”) opposed trade mark application No. 1819816 for the mark MOTHERSKY (“Opposed Mark”) for “coffee; coffee beans; chocolate” goods in class 30 and “coffee roasting; coffee grinding” services in class 40 in the name of Cantarella Bros Pty Ltd (“Cantarella”).

Energy Beverages’ opposition claimed that the Opposed Mark was deceptively similar to its prior registered marks which consisted of the word MOTHER in various classes including classes 29, 30, 32, 33 and 41 for beverages including “coffee and coffee based beverages”, and related services (“Mother Marks”). The Registrar rejected the opposition, primarily on the basis that the Opposed Mark was distinguishable from the Mother Marks.

Energy Beverages’ main contention was that the essential element shared by both the Opposed Mark and its Mother Marks was the word “MOTHER”. Energy Beverages also argued that the suffix “SKY” would be viewed by consumers as a qualifier or variant of the word “MOTHER”.

The Registrar found that despite the commonalities between the marks, when viewed as wholes, there was no real or tangible danger of confusion likely to arise. The Registrar indicated that it was unlikely that a consumer would view the word “SKY” as a qualifier or variant because it was a word with a well understood meaning, which is not descriptive or connected to the goods. Further, the Registrar considered that the impression engendered by the respective marks would differ because the comparison was between an invented word with no ordinary meaning, and a word with an ordinary meaning, i.e. MOTHERSKY vs MOTHER.

Energy Beverages also contended that Cantarella’s use of the Opposed Mark would be likely to deceive or cause confusion because of its reputation in the Mother Marks.

The Registrar found that Energy Beverages did have a reputation in the Mother Marks in Australia at the relevant date, but that reputation was only in respect of energy drinks. As such, the Registrar was of the view that consumers were so familiar with the Mother Marks in relation to energy drinks, that the likelihood of confusion or deception was reduced.

The Registrar also found that use of the Opposed Mark was unlikely to mislead or deceive, or amount to passing off. Therefore, Cantarella’s marks were allowed to proceed to registration.

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