Energy Beverages LLC v Cantarella Bros Pty Limited  ATMO 198 (21 December 2020)
In the latest decision in an ongoing dispute, Cantarella Bros Pty Limited applied to remove the Australian MOTHERLAND registration owned by Energy Beverages LLC on the basis of non-use.
Energy Beverages, the owner of Mother Energy Drinks, owns a number of trade marks for and containing the word “MOTHER” in respect of beverages.
Cantarella owns the Vittoria Coffee brand and has applied to register MOTHERSKY in respect of coffee, coffee beans, and chocolate in Class 30.
Energy Beverages opposed the removal application and sought to rely on its use of the MOTHER trade mark (in combination with other words and alone) in the absence of substantial actual use of the MOTHERLAND trade mark in the relevant non-use period in relation to its registered class 32 goods. The only evidence of use of the MOTHERLAND trade mark was examples of a marketing campaign from 2010 and 2011, including an advertisement video uploaded to YouTube in 2011. The Registrar found that this evidence was no more than an example of a passive historical snapshot of a marketing campaign that was no longer actively promoted, and the potential for consumers to access the 2011 advertising video via YouTube during the relevant period did not amount to genuine commercial use of the trade mark.
Energy Beverages sought the Registrar’s discretion based on its significant reputation in the MOTHER trade mark, putting forward substantial evidence of use of MOTHER on its own and in combination with other words. It contended that the MOTHER trade mark is frequently coupled with secondary words or taglines, and that consumers understand use of MOTHER-formative marks as being related to Energy Beverages.
Cantarella submitted, and the Registrar agreed, that this argument is problematic as it would permit Energy Beverages to maintain registrations for any trade mark containing MOTHER for all beverages. The Registrar agreed with the comments of Delegate Nicholas Barbey in the MOTHER LOADED ICED COFFEE decision, that the significant reputation of Energy Beverages is limited to the MOTHER trade mark in relation to energy drinks.
The Registrar directed the MOTHERLAND registration to be removed from the Register for all goods and awarded costs against Energy Beverages.
Energy Beverages is appealing the decision.
The full decision can be read here.