In September 2017, Vitasoy International Singapore Pte. Ltd (Vitasoy) applied to register the trade mark ‘GROWING MILK SINCE 1940’ (Application No. 1875463) in Australia (Proposed Trade Mark).  The trade mark application sought to cover goods in Classes 29 (non-dairy milk products including almond milk and soy milk), 30 (beverages made from cereals) and 32 (rice and fruit-based beverages).

Following the publication of the Proposed Trade Mark on 15 February 2018 in the Australian Official Journal of Trade Marks, the application was opposed by Fonterra Co-Operative Group Limited (Fonterra), a New Zealand based-company which produces and exports dairy products and employs approximately 1700 people Australia-wide.  In response, Vitasoy lodged a Notice of Intention to Defend in June 2018.

Fonterra’s opposition was based on three grounds of opposition under sections 41, 42 and 43 of the Trade Marks Act 1995 (Cth) (the Act).

Section 41 requires a trade mark application to be rejected if the proposed mark is not capable of distinguishing the goods or services claimed from another trader’s similar goods or services.  For example, a proposed trade mark is likely to be non-distinctive if it describes the kind, quality, quantity, intended purpose, value, geographical origin or some other characteristic of the goods or services (such as ‘RED APPLES’ for the sale of apples).  Fonterra did not press the ground of opposition in respect of section 41.  We consider this to be appropriate as the Proposed Trade Mark, when taken as a whole, is not simply descriptive of the goods claimed in the application.

In summary, Fonterra’s primary arguments were that:

1. the Proposed Trade Mark is contrary to law under section 42 of the Act because its use would amount to a breach of the Competition and Consumer Act 2010 (Cth) and Food Standards Code Australia New Zealand; and

2. the Proposed Trade Mark should be rejected under section 43 of the Act because it contains a connotation which is likely to deceive or cause confusion in the mind of a reasonable consumer.

Fonterra provided evidence in support of its opposition that the use of ‘milk’ and other dairy terms are tightly regulated in Australia in order to ensure acceptable standards and the integrity of Australian exports.  In particular, the Australia New Zealand Food Standards Code states that a good sold as ‘milk’ must be ‘mammary secretion of milking animals’.

Further, Fonterra argued that milk and soy products have different nutritional profiles and as a result some consumers may need or want to avoid one or the other.  Therefore, it is important that the line between soy drinks and dairy milk products is not blurred.

In response, Vitasoy provided evidence that it had sold its soy and other plant-based drinks in Australia since 1977.  Vitasoy cited a number of registered trade marks in Australia that contain the word ‘milk’ for plant-based drinks.

Vitasoy also cited a decision by the Australian Advertising Standards Board in 2017 which dismissed a complaint in relation to a Vitasoy television commercial  which used the word ‘milk’ to describe soy milk.  The complaint was dismissed by the Board as most members of the community should recognise and accept “that the term ‘milk’ may be used in a food name in connection with the sale and advertisement of plant-based beverages”.

The opposition of the trade mark application by Fonterra failed.  In particular, the Registrar of Trade Marks rejected Fonterra’s argument that the reference to ‘milk’ in the Proposed Trade Mark without descriptors such as ‘soy’ or ‘rice’ would automatically result in the connotation that the products sold under the trade mark are or contain dairy milk.  This was because reasonable consumers are likely to be aware that dairy milk is not grown (it is milked from a cow, which is raised or bred) whereas plants that are the primary ingredient of plant-based milk are grown.  Accordingly, the Registrar held that it is highly unlikely that a reasonable consumer, when viewing the trade mark as a whole, would consider that the Proposed Trade Mark refers to dairy milk.

Trade mark applicants should be aware that a trade mark application will be rejected if there is a reasonable likelihood that the proposed mark is likely to deceive or cause confusion in the mind of a reasonable consumer.  However, the ability for a proposed trade mark to deceive or cause confusion must be established by the opponent when viewing the trade mark as a whole.  In this case, Fonterra’s opposition failed as its argument focussed on the word “milk” rather than considering the meaning of the Proposed Trade Mark as a whole.  In particular, the reference to “growing milk” and its likely perception by Australian consumers was fundamental to the Registrar’s decision.

Further, this case was slightly unusual in that the opponent raised section 43 of the Act as a ground of opposition but did not raise section 44.  As noted above, section 43 requires a trade mark application to be rejected if it contains a connotation or secondary meaning which is likely to deceive or cause confusion. Similarly, section 44 requires a trade mark application to be rejected where there is deceptive similarity between the applicant’s mark and a mark registered by another party in respect of similar goods and services. Due to the clear overlap between the two sections, it is common for an opponent to press both grounds of opposition in proceedings.  As there was no registered mark or prior application on the Register which was deceptively similar to the Proposed Trade Mark, section 44 was not available to Fonterra as a ground of opposition.

SWS Lawyers has a dedicated trade mark registration and advisory service and regularly advises on intellectual property strategy implementation processes.  Please contact us if you require any assistance.

This article was co-written by Intellectual Property Lawyer, Laura Bain.

This article is not legal advice.  It is intended to provide commentary and general information only.  Access to this article does not entitle you to rely on it as legal advice.  You should obtain formal legal advice specific to your own situation.  Please contact us if you require advice on matters covered by this article.