Trade marks are enforceable rights that, once registered, allows the owner to protect goods and/or services being sold under that trade mark (or a deceptively similar or substantially identical mark) by others. Trade mark registration is a highly competitive industry, has incredible marketing potential and, in some cases, are invaluable to a company’s or business’ identity and ranking within its desired industry. For these reasons, trade mark registration is in high demand.

It comes as no surprise that the applicant for the trade mark application needs to satisfy certain criteria in order to obtain registration of its trade mark. One of these is a simple, yet essential requirement – you must show use, or an intention to use your trade mark.

Pursuant to section 27 of the Trade Marks Act 1995 (Cth) (Act), the applicant needs to have an intention to use the trade mark application for the goods and/or services of that trade mark at the time of filing the application.

The applicant could also satisfy this requirement if they show an intention to authorise another entity to use the trade mark, or authorise a body corporate to use the trade mark application through assignment. However, if there is no intention to use the trade mark for the goods and/or services, then registration of the trade mark can be refused.

This was one of the major topics of discussion in the recent case of Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999.

The case concerned trade mark application no. 1989429 for KANGAROO MOTHER (the Kangaroo Mother Mark) which was filed by Erbaviva Natural Care (New Zealand) Limited (Erbaviva) for the registerable goods. Erbaviva assigned the Kangaroo Mother Mark application to the Respondent of this matter, Kangaroo Mother Australia Pty Ltd (Kangaroo Mother Australia). An opposition to the registration of the Kangaroo Mother Mark was raised by Energy Beverages LLC (Energy Beverages) pursuant to section 59 of the Act.

The decision was handed down in favour of Energy Beverages who succeeded in arguing the case under section 59 of the Act that the registration of the Kangaroo Mother Mark for the registerable goods should be refused on the basis that Erbaviva, at the time of filing the Kangaroo Mother Mark, had lacked the intention to use the Kangaroo Mother Mark, and lacked the intention to authorise Kangaroo Mother Australia, through assignment, to use the Kangaroo Mother Mark.

Although there were other grounds of opposition raised by Energy Beverages, this article only covers the components and considerations of the section 59 opposition.

If you are applying for a trade mark application, you must intend to use the trade mark (or authorise another entity to use it) and you should always be aware of the considerations that ultimately proved decisive in the case.

Key Takeaways

  • When you are filing a trade mark application, you must show an intention to use or an intention to authorise the use of the trade mark application in Australia for its goods and/or services. In the event that the trade mark application is the subject of an assignment to a body corporate, the assignor must establish an intention for that body corporate to use the trade mark application (per section 27(1)(b) of the Act.
  • The applicant for a trade mark must show a “real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered”. [1]
  • If there is a lack of intention by the applicant, the opponent may be successful in opposing the registration of the trade mark application by raising section 59 of the Act to establish that the applicant did not intend to use, intend to authorise the use of, or intend to assign to a body corporate for it to use, the trade mark application.
  • The Court found that Erbaviva lacked the intention to use, and Kangaroo Mother Australia (of the related entities) lacked intention to use the Kangaroo Mother Mark, on the basis that:
  1. the Court considered that the Kangaroo Mother Mark application was proposed by the director of Erbaviva, Mr Zheng, “within a matter of minutes by cutting and pasting from the IPONZ website” which did not reflect “an intention to use of any kind, let alone a “real and definite intention” of the type necessary”; [2]
  2. the trade mark attorney on behalf of Erbaviva filed the application for the Kangaroo Mother Mark for a significantly broader range of goods than what was instructed by Mr Zheng. This inferred that Mr Zheng and Erbaviva may not have intended to use the Kangaroo Mother Mark for the broader range of goods that was filed;
  3. there was a lack of documentary evidence, including for proposals or plans by Erbaviva or Kangaroo Mother Australia that sufficiently showed an intention to use the Kangaroo Mother Mark for the broader range of goods;
  4. neither Erbaviva or Kangaroo Mother Australia had produced or attempted to produce the broader goods applied for in the Kangaroo Mother Mark since the filing of the Kangaroo Mother mark on 15 February 2019; and
  5. His Honour held that the state of mind of Erbaviva at the time of filing the trade mark application could not be treated the same as Kangaroo Mother Australia (or any of its related companies).

 

Background

The trade mark application for KANGAROO MOTHER was filed on 15 February 2019 in the name of Erbaviva Natural Care (New Zealand) Limited (Erbaviva)for a wide range of goods in classes 5, 29, 30, 31 and 32. The Kangaroo Mother Mark application was assigned from Erbaviva to Kangaroo Mother Australia on 10 March 2020.

Energy Beverages is the registered owner of a number of Australian trade marks which contain the word MOTHER for goods in classes 5 and 32, including:

  1. AU TM no. 1230388 for MOTHER in class 32 with the filing date of 17 March 2008; and
  2. AU TM no. 1320799 for MOTHER in class 5 with the filing date of 14 September 2009.

Energy Beverages filed an opposition to the registration of the Kangaroo Mother Mark on the grounds that the Kangaroo Mother Mark:

  1. was alleged to be deceptively similar to Energy Beverages’ Mother marks (section 44);
  2. was alleged to be similar to Energy Beverages’ Mother marks which it alleged had acquired a reputation and was likely to cause confusion or deceive the public (section 60); and
  3. was alleged to be contrary to law due to claims that may be raised against it under the Australian Consumer Law (section 42(b)).

The Kangaroo Mother Mark was filed for class 5 goods including (without limitation) pharmaceutical, vitamin, and nutritional and health food-related goods, and for class 32 including (without limitation) non-alcoholic, and soft or fruit drinks or juices, and similar goods.

When the opposition was refused, it filed grounds for appeal of the delegate’s decision. One of these grounds for appeal, and the topic of this article, was based on the objection to registration pursuant to section 59 of the Trade Marks Act 1995 (Cth).

According to section 27(1)(b), if an entity is applying for trade mark registration, that entity must either:

  1. use or show an intention to use the trade mark; or
  2. show an intention to authorise another entity to use the trade mark; or
  3. if assigning to a body corporate, must show an intention for the body corporate to use the trade mark;

in relation to the respective goods and/or services.

Energy Beverages sought to oppose registration of the Kangaroo Mother Mark on the ground of section 59 by arguing that Erbiviva, at the time of the priority date, did not intend to use, or authorised another entity to use, the Kangaroo Mother Mark, nor did it intend to assign the Kangaroo Mother Mark to Kangaroo Mother Australia for it to use the mark.

Ultimately, Energy Beverages succeeded on this ground of opposition.

 

Reasons for Succeeding on the section 59 Opposition

The Court raised that the applicant of the trade mark application must show a “real intention to use, not a mere problematic intention, not an uncertain or indeterminate possibility, but a resolve or settled purpose which has been reached at the time when the mark is to be registered”. [1]

Energy Beverages raised a prima facie case of proving a lack of intention by Erbaviva, which shifted the onus of proof onto Kangaroo Mother Australia to argue that Erbaviva did have an intention to use the Kangaroo Mother Mark for the goods.

It became evident to his Honour, Justice O’Callaghan, that Mr Zheng of Erbaviva and Kangaroo Mother Australia could not provide sufficient evidence to prove that Erbaviva, at the time of filing, had an intention to use, or an intention for Kangaroo Mother Australia (or its related companies) to use upon assignment, the Kangaroo Mother Mark for its intended goods. His Honour reasons were based on the following:

  1. The initial scope of the goods of the Kangaroo Mother Mark went beyond what Erbaviva intended to be filed. This was evidenced by the fact that a trade mark attorney, on behalf of Erbaviva, had filed the Kangaroo Mother Mark for a significantly broader range of goods than what was instructed by Erbaviva. Further, the preparation of the Kangaroo Mother Mark was found to not reflect a “real and definite intention” to use the goods, and those goods “went beyond anything that could even remotely be said to have been the subject of an intention to use of any kind”. [2]
  2. There was a lack of documentary evidence, including plans or proposals prepared by either Erbaviva or Kangaroo Mother Australia that sufficiently showed an intention to branch into producing the broader range of goods in the Kangaroo Mother Mark. [3]
  3. Four years on since the filing of the Kangaroo Mother Mark, neither Erbaviva or Kangaroo Mother Australia had produced, attempted or intended to produce any of the broadened goods of the Kangaroo Mother Mark. His Honour insighted that “a failure to use after the filing date may enable a Court to infer that there was a lack of intention”. [4]
  4. The intention to use the broader range of goods must come from the state of mind of the entity that prepared the trade mark application, being Erbaviva, and its sole guiding mind, Mr Zheng. His Honour stated that the state of mind of Kangaroo Mother Australia, and that of the related companies (and the directors of those companies) could not be treated as the same state of mind of Erbaviva as there was “not a skerrick of evidence” to suggest this. [5]

His Honour was satisfied that Energy Beverages had proven on the grounds of section 59 that there was no intention to use the Kangaroo Mother Mark for the broader range of goods by Erbaviva, nor did it intend for Kangaroo Mother Australia to use the mark. Succeeding in this opposition led to the eventual decision held by his Honour that the registration of the Kangaroo Mother Mark should be refused.

The full decision can be viewed here:  https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2023/2023fca0999

 

Tips for Filing a Trade Mark Application

If you are looking to file a trade mark application in Australia, you should be aware of these tips:

Carefully plan and prepare your trade mark application

  • You should carefully consider the goods and/or services that you want covered under your trade mark application.
  • Your trade mark application should only cover goods and/or services that you currently offer, or you intend to offer under your trade mark application.

 

You must show use or an intention to use

  • You must show use of the goods and/or services, or an intention to use those goods and/or services covered under trade mark application.
  • The use of the goods and/or services must clearly and distinguishably show the trade mark (whether this is a word mark or a figurative or logo mark).
  • If you do not currently use certain goods and/or services, you should establish use as soon as possible.
  • Non-use of certain goods and/or services may lead to the registration of your entire trade mark application vulnerable to opposition, not just the goods and/or services that are not used.

 

Document or record your intention to use goods and/or services that are currently unused

  • If you intend to use certain goods and/or services covered in your trade mark application, you should document or record your intention.
  • If you are a business, recording your intention could be in the form of plans or proposals that are clearly labelled and shows the trade mark, and lists the various goods and/or services that you intend to use or offer under that trade mark.

 

Refereces:

[1] Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999 at [46]; Ducker’s Trade Mark [1929] 1 Ch 113 at 121 (Lord Hanworth MR, Lawrence and Sankey LJJ agreeing).

[2] Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999 at [107]; Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808;(2020) 158 IPR 9 at 37 [119] (Burley J); Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100; 75 IPR 478 at 497 [160].

[3] Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999 at [106].

[4] Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999 at [108]; Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808; (2020) 158 IPR 9 at 38 [125].

[5] Energy Beverages LLC v Kangaroo Mother Australia Pty Ltd [2023] FCA 999 at [120].