Energy Beverages LLC v Cantarella Bros Pty Ltd [2022] FCA 113

FEDERAL COURT OF AUSTRALIA

Energy Beverages LLC v Cantarella Bros Pty Ltd [2022] FCA 113 File numbers: NSD 1711 of 2019 NSD 1858 of 2019 NSD 63 of 2021

Judgment of: HALLEY J

Date of judgment: 18 February 2022

Catchwords: TRADE MARKS – appeal from two decisions of the delegate of the Registrar of Trade Marks (delegate) to refuse opposition to application for removal of appellant's trade marks (MOTHERLAND mark and MOTHER LOADED ICED COFFEE mark, together marks) – hearing de novo – whether appellant had an intention in good faith to use MOTHER LOADED ICED COFFEE mark pursuant to s 92(4)(a) of the Trade Marks Act 1995 (Cth) (Act) – whether appellant had demonstrated genuine commercial use of the MOTHERLAND mark during relevant period pursuant to s 92(4)(b) of the Act – whether facts and circumstances warrant exercise of discretion pursuant to s 101(3) of the Act to allow marks to remain on Register – where no intention in good faith to use MOTHER LOADED ICED COFFEE mark – where no genuine use of MOTHERLAND mark during relevant period – where insufficient facts or circumstances to warrant exercise of discretion – appeal dismissed TRADE MARKS – appeal from decision of the delegate to refuse opposition to registration application of trade mark by respondent (MOTHERSKY mark) – hearing de novo – whether MOTHERSKY mark is substantially identical or deceptively similar to appellant's marks or MOTHER marks pursuant to s 44 of the Act – whether goods in registration application are goods of the same description to appellant's registrations – whether respondent's use of MOTHERSKY likely to deceive or cause confusion due to appellant's reputation in MOTHER marks pursuant to s 60 of the Act – where MOTHER marks had acquired a significant reputation in Australia for energy drinks – appeal dismissed CONSUMER LAW – whether use of the MOTHERSKY mark contrary to law pursuant to ss 19 or 29 of the Australian Consumer Law due to appellant's reputation in the MOTHER marks – appeal dismissed