Uncontested appeal leads to the registration of the a2 Milk and TRUE A2 trade marks
30 March 2022
30 March 2022
Most milk in Australian supermarkets contains a mixture of both A1 beta-casein and A2 beta-casein milk proteins. The A1 milk proteins are said to produce digestive problems for some consumers.
The a2 Milk Company (a2MC) sells baby formula and fresh milk which do not contain A1 protein, under brand names featuring the term a2/A2.
a2MC applied to register the word marks a2 Milk and TRUE A2 (Applications) covering a range of dairy goods. A trade competitor, Lion Dairy and Drinks (LD&D) opposed the Applications under section 41 of the Trade Marks Act 1995 by contending that because "A2" held a descriptive meaning, each mark lacked the sufficient level of distinctiveness required to distinguish a2MC's products.
The Trade Marks Office (TMO) accepted LD&D's arguments and refused the registration of the Applications on the basis that:
a2MC sought an appeal of the TMO's decisions to the Federal Court. In the meantime, the parties reached a settlement. The appeal was therefore heard in circumstances where:
Because of the public interest considerations relevant to the issue of distinctiveness, the Court was not in a position to make such orders based solely on the agreement between the parties. In two cases with a similar set of circumstances, the public interest concerns had been addressed by the trade mark applicant obtaining a letter from the TMO that indicated the Trade Marks Registrar did not oppose the original decisions being set aside.
Relying on this guidance, a2MC sought a similar letter from the TMO. However in this case the request was declined, with the Deputy Trade Mark Registrar concluding that she "was unable to issue a letter indicating that she has no objection to the decisions of her Delegates being set aside."
Justice Bromwich was satisfied that this left some legitimate uncertainty as to the fate of the Applications. Therefore in the interests of certainty and finality and having regard to the de novo nature of each appeal proceeding, Justice Bromwich decided to accede to a2MC's request to hear the matters.
Justice Bromwich noted that a2MC had "assisted the Court to a considerable degree, wisely advancing its own interests" by filing a substantial body of evidence including:
While giving "the usual degree of weight" to the Registrar of Trade Marks' decisions, Justice Bromwich was satisfied, on the evidence before him and without the benefit of contradictory argument, that the terms a2/A2 make an allusive reference to a2MC's products and their qualities but are not directly descriptive. Justice Bromwich considered that a use of the term 'A2' by another trader to do more than identify that their product contains A2 bovine beta-casein protein would not be properly motivated and there was accordingly no reason to deny the registration of the Applications.
Justice Bromwich also commented that the evidence of past use before the priority dates of the Applications and the intended continuing use clearly established that the a2 Milk and TRUE A2 marks would operate to distinguish a2MC's goods from those of other traders.
Justice Bromwich concluded that it was appropriate to order that each Application proceed to registration.
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