Griffith Hack has been recognised by Doyle’s Guide 2022 across multiple categories, with principals Kellie Stonier and Gavin Adkins receiving individual accolades.

Individual recognition
Brisbane-based principal Kellie Stonier has been named one of Queensland’s leading intellectual property lawyers, receiving recognition in the prestigious “Leading” category. Kellie was also recently listed for her intellectual property law expertise in the latest edition of Best Lawyers’.

Melbourne-based principal Gavin Adkins has been named as a leading contentious intellectual property lawyer in Victoria, receiving a “Recommended” ranking. This was the first time that Gavin has been honoured by Doyle’s.

Firm recognition
Further to the individual accolades, Griffith Hack has been ranked by Doyle’s as a leading contentious and non-contentious intellectual property law firm in both NSW and Victoria, and a leading intellectual property law firm in Queensland.

Griffith Hack principals Amanda Stark and Janelle Borham have been named as Patent Stars in the IP STARS 2022 rankings by Managing IP.

This result highlights Amanda and Janelle’s standing as leaders in patent work both within Australia and internationally.

Earlier in 2022, Griffith Hack was also named as a Tier 1 firm for Trade Mark Prosecution and a Tier 3 firm for Trade Mark Contentious by IP STARS, with Anne Makrigiorgos recognised as a Trade Mark Star.

Published by Managing IP, IP STARS recognises firms and senior practitioners who have been identified as leaders in their fields and is considered one the most comprehensive and widely respected guides in the IP profession.

About Amanda & Janelle

Amanda Stark

Amanda is one of the leading patent practitioners in the Australian biotechnology space.  She is also a key member of Griffith Hack’s leadership team, heading up the ChemLife practice group and leading the International Business Development and Foreign Associate Relationship program.

Amanda has a reputation for grasping complex legal and technical issues and developing creative solutions to achieve targeted results. Known in the industry for her tenacity and lateral thinking, clients transfer their work to Amanda when issues arise that most attorneys cannot resolve.


Janelle Borham

Janelle Borham is a principal and patent and trade marks attorney based in Melbourne. She is also the current president of the Institute of Patent and Trade Mark Attorneys of Australia.

Janelle provides strategic IP advice to large corporations locally and overseas, and assists clients drafting patent specifications. She has particular expertise in the area of food sciences, working with multinationals in an area that has changed significantly over the last 20 years. 

Griffith Hack is proud to announce that three members of our Law team have been named in the Best Lawyers Australia guide for 2023.

Derek Baigent (Sydney), Kellie Stonier (Brisbane) and Anne Makrigiorgos (Melbourne) have each been recognised the area of Intellectual Property Law. For Derek, this marks the eighth year running that he has received this honour. While for Kellie, this marks her fourth year running and Anne her second.

Best Lawyers is a peer review guide to the legal profession and awardees are nominated by their peers.

World Intellectual Property Day is being celebrated across the globe today, with this year’s theme shining a spotlight on IP and youth and how we can innovate for a better future.

Here at Griffith Hack, we use World IP Day 2022 to recognise the young inventors, technologists, engineers and entrepreneurs who are developing the innovative products and services that will help steer a course towards a better future.

We also use today to celebrate our cohort of talented young patent attorneys, trade marks attorneys and lawyers who work side-by-side with these innovators to help bring their ideas to the world. We thought we’d speak with some of them to find out why they enjoy working in IP, and what excites them about its future.

Thanks to Jessie Shu, John Scicluna, Radhika Moore and Dr Bryan Leaw for participating.

Griffith Hack is thrilled to be attending the INTA 2022 Annual Meeting in Washington, D.C from 30 April – 4 May, with our team looking forward to reconnecting with colleagues in person.

Representing Griffith Hack at the event will be:

If you are attending INTA and would like to schedule a meeting in advance, please contact Nicola, Emma, Ray or Simon directly, or alternatively, contact Faye Oxley – Business Development Manager:

Anthony Selleck reviews today’s decision in Commissioner of Patents v Thaler [2022] FCAFC 62 which reverses an earlier ruling that artificial intelligence can be an “inventor” for the purposes of the Australian Patents Act 1990.

In July 2021, the Australian Federal Court delivered what can be described as a stunning decision, that an artificial intelligence can be an “inventor” for the purposes of the Australian Patents Act 1990. The decision seemingly opened the door to the Australian Patent Office granting patents to outputs wholly produced by artificial intelligence systems with no human intervention.

The Commissioner of Patents appealed the decision to the Full Court, and earlier today, the Court unanimously allowed the Commissioner’s appeal.

Prior to today’s decision, Australia was the only country in which a court decided in favour of the patent applicant, with courts in Germany, the United States and United Kingdom (along with Patent Offices in a number of jurisdictions) reaching the opposite conclusion.

Central to the Full Court’s decision was the observation that the law relating to the entitlement of a person to the grant of a patent is premised upon an invention that arises “from the mind of a natural person or persons”. In reaching this conclusion, the Full Court noted that it is those who contribute to, or supply, the inventive concept who are entitled to the grant of a patent, and that the patent grant is a reward for the inventor’s “human” ingenuity.

The Full Court also observed that it is the “inventor” (as opposed to the Applicant) who makes certain representations in the patent specification as to the nature of the invention. It is these representations that underlie the patent bargain between the inventor and the state, and are intertwined with concepts material to the validity of patent applications and patents. According to the Full Court, the Patents Act 1990 does not contemplate beings other than human being having the capacity to make representations, or indeed misrepresentations that may render a patent liable to be revoked.

In the absence of a successful appeal to the High Court of Australia, it can be assumed that Australian patent applications must name a human inventor, or are at risk of lapsing.

There are many policy issues that arise with respect to granting patent rights to the results and insights that artificial intelligence systems generate. We have no doubt that these will be hotly debated in the future, in the context of reforms to the patent system or the creation of new intellectual property systems specifically tailored to artificial intelligence.

Applications are now open for Artificial Intelligence (AI) and Digital Capability Centre Grants of up to A$11 million, as part of a Federal Government plan to drive the adoption of AI technologies by Australian businesses. Anthony Selleck explains why applicants should conduct IP due diligence before completing their submission.


The Australian Government released an Artificial Intelligence (AI) Action Plan in June 2021, which included a total of A$44 million funding to establish four “AI and Digital Capability Centres”.

Grants of up to A$11 million are now available for eligible entities to establish the new Centres, with applications needing to be submitted through the Business Australia website by 12 May 2022.

Overview of the grant

AI and Digital Capability Centres are intended to drive the adoption and use of AI technologies by Australian businesses. It is envisaged that the Centres will connect small and medium enterprises (SMEs) with AI equipment and tools, provide services and training, and link the enterprises to AI skills and expertise.

The Centres are also intended to support the development, commercialisation, and adoption of high-value AI products and services for the domestic and global marketplace.

According to the Action Plan, the objectives for establishing the Capability Centres are to:

  • establish a “front door” for SMEs to access capabilities, expertise and innovative technologies to adopt, adapt, test and deploy AI technologies;
  • foster collaboration and connect SMEs with opportunities to lift productivity and drive commercialisation;
  • coordinate and drive the growth of Australia’s AI ecosystem; and
  • lift SME capabilities to enable more confident adoption of AI solutions.

Important points for grant applicants

According to the applicable Grant opportunity guidelines, an application for a grant to establish a Capability Centre must be a joint application with a lead organisation that will be the main driver of the project.

Each joint application must include amongst its project partners and lead organisation, at least one Australian industry partner. It is intended that the Centres will build on an existing establishment, such as a technology or manufacturing precinct/hub, university or centre of excellence. In this regard, the guidelines list the following bodies as examples of Australian industry partners:

  • an Australian research partner (such as a university or co-operative research centre);
  • a multi-national technology firm;
  • a large sector-specific firm; and
  • a state/territory agency or body.

When applying for a grant, applicants must certify that they “have or will have relevant intellectual property guidelines in place” in order to establish and run the Capability Centre.

We strongly suggest that applicants conduct IP due diligence and establish relevant guidelines (if they are not already in place) prior to making any certification in a grant application. 

Summary 

Griffith Hack is committed to working with clients across the full spectrum of industries that adopt AI technologies. For more information or assistance, such as in conducting IP due diligence to support an intellectual property certification, please contact us

The Therapeutic Goods Administration has established new guidelines to govern how influencers can promote products on social media in return for payment or free products from brands. Gavin Adkins, Bridget Renehan and Aimee Foster review the updated code, how it will impact influencers, and what therapeutic goods brands need to be aware of.

What’s new?

The Therapeutic Goods Administration (TGA), Australia’s regulator of medicines and medical devices, released a new advertising code in January 2022, which set out new guidelines affecting how products the TGA regulates can be promoted by influencers on social media. This includes everyday goods, such as vitamins and sunscreens, but also includes goods that can treat serious conditions, such as prescription medicines and surgical implants.

Influencers, who promote products on social media in return for payment or free products or services from brands, must now be in accordance with the code where they promote therapeutic goods. The updated advertising code clarifies a difference between “testimonials” and “endorsements”. Testimonials which involve a personal statement about the perceived benefits of a product, must no longer be given by people involved in the marketing of the goods. Instead, influencers will be restricted to only making endorsements on social media provided the endorsement does not refer to the person’s personal experience using the good (which would amount to a testimonial). Endorsement must only illustrate the listed benefits of the goods and be made in accordance with the recommended use.

Therefore, advertisements should not include fanciful or deceptive representations, and any scientific claims must be supported by empirical data and research. They also should not perpetuate unrealistic expectations about the safety of the goods. To remain balanced and accurate, promotions should align with the good’s label and directions for use.

Reason for change

The aims of the changes include improving transparency in the wellness industry by preventing false or misleading claims about therapeutic goods. The review comes in response to incidents of influencers making apparently disingenuous reviews and unsubstantiated claims in exchange for payment or gifts from brands. By promoting ethical advertising, the code intends to reduce the misuse of therapeutic goods, as well as preventing the sale of goods under false pretences of the product’s performance.

Affected goods

The changes do not apply entirely across the beauty industry, but strictly applies to products alleging health benefits including vitamins and supplements, sunscreen, treatments for skin conditions, medicines and medical devices. The TGA recognises the demand for regulation of these goods due to their medicinal claims and associated risks.

Anticipated effect

After June 30, influencers must adapt their promotion of such items to be from an objective stance. They will be confined to relaying the approved purpose of the goods. Importantly, this extends to the removal of past paid-for testimonials to avoid penalties. Further, all sponsored posts need to contain a disclosure of their brand affiliation. This change will limit influencers’ ability to provide more personal product evaluations as they are no longer able to relate their own product experience where it is a paid promotion.

Contact us

If you are a therapeutic goods company who uses, or are considering using, influencers to promote your products on social media, please contact us to find out how these changes might affect you.

Our team discusses the key measures in Australia’s 2022-23 federal budget that could help drive innovation, research commercialisation and business growth, along with related digital technology and employee share scheme initiatives.

Treasurer Josh Frydenberg has handed down Australia’s 2022-23 federal budget, which spruiked optimism amid the post-pandemic recovery, a global surge in inflation, and an unstable geopolitical landscape.  

While much of the focus centred on easing cost of living pressures for Australians and the looming spectre of an election, the budget contained a range of measures to support Australia’s innovation agenda and ongoing business-led growth, including:

  • Extension of the patent box regime to the agriculture and low emissions technology sectors to underpin innovation. 
  • A $2.2bn economic accelerator program to progress research past the initial stages of high risk and uncertainty, and into thriving businesses. 
  • $988m to support university research commercialisation by driving university and industry collaboration, workforce mobility and research translation. 
  • Investment in apprentices in critical roles. 
  • Reduced red tape for foreign investment. 
  • Expanding employee share schemes to make our innovation industries attractive internationally. 

The budget also featured investments into industries and regions that are likely critical in ensuring the country’s future prosperity, including space, critical minerals, advanced manufacturing, and regional and Northern Australia.  

In his address before parliament, Frydenberg emphasised that Australia needs to be a country:

…where aspiration and enterprise are encouraged and rewarded. Where greater self reliance leaves our nation less vulnerable. Where our modern competitive industries create new jobs.”  

The measures included in this budget support this rhetoric – time will tell if they are an accelerant for innovation to take off. 

A high-level review 

The key innovation announcement is the expansion of the proposed new patent box regime to not only the low emissions technology sector but also to the agricultural sector, with effect from 1 July 2023.

There are also significant levels of government funding being made available to Australia’s regions, targeting improved university collaboration and research commercialisation, critical infrastructure and other key industries, some of which have previously been announced. 

From a digital perspective, the Government has also announced key initiatives such as a 120% deduction for digital investment through a Technology Investment Boost and a 20% reduction in external training costs through a Skills and Training Boost – targeted at small and medium businesses (an annual turnover of less than $50 million) to help the transition to increased digital operations. 

Our perspective 
The extension of the patent box regime to both the agricultural and low emissions technology sectors is a welcome announcement and will provide these critical sectors with significant opportunities. We look forward to continuing to engage in consultation with the Government on this key new development and the practical considerations needed to ensure it is successful. 

Since both the initial patent box and Refundable Digital Games Tax Offset (DGTO) legislation are as yet unenacted, it is hoped that these measures are prioritised in the next Parliament regardless of the outcome of the forthcoming election. The previously announced Australia’s Economic Accelerator (AEA) program to turn leading research into business opportunities, and the University Research Commercialisation Action Plan, should help improve commercialisation outcomes in high potential areas that are crucial to Australia’s future (such as critical minerals, food and beverage, medical products, recycling and clean energy, defence and space). 

We will continue to share our perspective on commercialisation frameworks with Government and work with universities and industry partners to facilitate collaboration.

Down to detail 

Patent box: Extended to agriculture and low emissions sectors 

It was announced that the proposed patent box regime will be extended to encompass the low emissions technology sector. This will support the Government’s technology-focused approach to reducing emissions in line with the target to achieve net zero emissions by 2050. 

The regime will also be extended to support practical, technology-focused innovations in the Australian agricultural sector. The Budget papers also reflect changes made to the initial patent box announcement for Australian medical and biotechnology patents in the Federal Budget 2021-22 that have arisen through consultation and are encompassed in the relevant legislation now before Parliament.  

The introduction of an Australian patent box regime is intended to support the onshore commercialisation of innovative developments in Australia by offering a globally competitive tax rate for profits generated from eligible Australian owned and developed patents. 

Eligible corporate income streams for all proposed sectors under the patent box regime will be subject to an effective income tax rate of 17% to the extent that the research and development (R&D) of the innovation took place in Australia, thereby satisfying the modified-nexus requirements of the OECD. This treatment will provide a reduction of 8% from the headline rates of corporate tax for base rate entities (BREs), and 13% for all other companies, with the eligible income proposed to be treated as non-assessable non-exempt (NANE) income. 

The following table summarises the key proposed dates for the now expanded patent box regime: 

SectorIncome yearsEligible patents
Medical and biotechnology Starting on or after 1 July 2022 Granted or issued after 11 May 2021 
Low emissions technology Starting on or after 1 July 2023 Granted or issued after 29 March 2022 
Agricultural Starting on or after 1 July 2023 Patents or Plant Breeders Rights (PBRs) granted or issued after 29 March 2022 

The Budget papers confirm that patents within the expanded sectors that are likely to be eligible are: 

  • Those relating to low emissions technology in the 140 technology areas listed in the Government’s 2020 Technology and Investment Roadmap Discussion Paper, or included as priority technologies in the Government’s 2021 and future annual Low Emissions Technology Statements  provided that the patented technology is considered to reduce emissions.
  • those linked to agricultural and veterinary (agvet) chemical products listed on the Australian Pesticides and Veterinary Medicines Authority (APVMA), PubCRIS (Public Chemicals Registration Information System) register, or eligible Plant Breeder’s Rights (PBRs). 

As with the initial medical and biotechnology phase of the patent box regime, the Government will consult with the relevant industry stakeholders before settling the detailed design of the patent box expansions.  

Australia’s Economic Accelerator (AEA) to turn leading research into business 

As previously announced on 1 February 2022, a $1.6 billion economic accelerator will form a critical part of a $2.2 billion package to commercialise six National Manufacturing Priorities (NMPs), including resources and critical minerals, food and beverage, medical products, recycling and clean energy, defence and space. 

By prioritising projects with high commercial potential under these six priority areas, the AEA’s provision of venture capital will help progress early-stage research past the initial stages of high risk and uncertainty, turning research ideas into thriving businesses that will contribute to a stronger Australian economy. The AEA will also work in collaboration with CSIRO’s Main Sequence Ventures, which will also receive a new $150 million boost to fund its expansion. 

The AEA will provide funding in three stages: 

  • Stage one being a proof-of-concept phase that will offer nearly 100 grants per year of up to $500,000 
  • Stage two as a proof-of-scale phase will provide funding for 36 recipients of up to $5 million 
  • Stage three will see up to 50 companies supported through Main Sequence Ventures, where $150 million will be provided in two successive co-investment funds 

Linked with the University Research Commercialisation Action Plan, it will be supported by investment of $296 million in industry-focused PhDs and fellowships, expected to generate 1,800 PhDs and over 800 industry fellows over a ten-year period, intended to place innovation “at the core of our economic future as nation”. 

University Research Commercialisation Action Plan 

Also announced on 1 February 2022, the University Research Commercialisation Action Plan will provide $988.2 million over five years from 2021-22. The Action Plan is intended to increase research commercialisation by driving university and industry collaboration, workforce mobility and research translation. The proposed funding will encompass the following: 

  • $505.2 million over five years from 2021-22 to establish AEA grants to support university research projects from proof-of-concept and proof-of-scale through to commercialisation. Under the AEA, the funded projects will align with the NMPs and will be in partnership with industry 
  • $295.2 million over five years from 2021-22 to establish new research training pathways for students and researchers, creating opportunities to work with industry through new Industry PhDs and fellowships, and delivering reforms to the Australian Research Council’s Linkage Program from 2026-27 
  • $150.0 million in equity funding over five years from 2021-22 to expand the Commonwealth Scientific and Industrial Research Organisation’s (CSIRO) Innovation Fund (Main Sequence Ventures). The venture capital investment will progress AEA projects with high commercialisation potential to reach at scale test and prototype stages 
  • $37.4 million over four years from 2022-23 to establish the CSIRO’s Research Translation Start program to take research from the lab into the market by building the entrepreneurial capacity of the workforce with a focus on the NMPs. 

Regional Accelerator Program (RAP) 

The Government has also identified 12 programs where it will specifically target Government investments through a $2 billion Regional Accelerator Program (RAP) to further grow Australia’s regional communities. The proposed funding over the next four years to 2025-26 will include the following: 

  • A $500 million Regionalisation Fund for regional manufacturers intended to enhance Australia’s international competitiveness by assisting regional manufacturers to translate ideas into commercial success.  
  • A $200 million Supply Chain Resilience Initiative.  
  • A $200 million Critical Minerals Accelerator Initiative over five years, which will provide grants to assist Australian critical minerals producers advance projects through planning, design, pilot and demonstration phases.  
  • The $500 million Modern Manufacturing Initiative (MMI). 
  • An additional $100 million for Export Market Development Grants (EMDG). 
  • An additional $60.4 million for the Recycling Modernisation Fund over the next four years, to support further regional investment in the recycling of plastics, tyres, paper and glass. 

As part of the commitment to critical minerals, the Government has also allocated $50.5 million over three years from 2022-23 to establish a virtual Critical Minerals Research and Development (R&D) Centre which will also assist in building Australian intellectual property in critical minerals processing and help create a competitive Australian critical minerals industry. 

Taking innovation to regional hubs and Northern Australia 

The Government has further committed $7.1 billion over 11 years from 2022-23 to support the economies of the following four key regional hubs across Australia: 

  1. The Northern Territory – aiming to fund infrastructure projects that support the manufacturing industry, promote the onshore processing of critical minerals and to strengthen the region’s position as an industrial and renewable energy hub. 
  1. North and Central Queensland – aiming to invest in water infrastructure and supply chain projects that promote water security and open up agriculture and industry growth opportunities. 
  1. The Pilbara region in Western Australia to fund infrastructure projects that support the mining, mineral processing and manufacturing sectors and accelerate growth in the hydrogen and renewable energy industries. 
  1. The Hunter region in New South Wales – aiming to fund transport infrastructure projects that will improve supply chain efficiencies and help diversify the economy, building on the region’s existing strengths and facilitating the development of new industries. 

The proposed investment funds will be targeted at strategic infrastructure and supply chain projects that will drive long-term economic and jobs growth in both existing and emerging industries. 

The Government also will continue to drive investment in Northern Australia’s agriculture, mining, education and tourism sectors by increasing funding for the Northern Australia Infrastructure Facility (NAIF) by $2 billion, to $7 billion. 

Other measures – making innovation start-ups more attractive, competitive and inclusive 

The Government will expand access to employee share schemes and further reduce red tape so that employees at all levels can directly share in the business growth they help generate. Where employers make larger offers in connection with employee share schemes in unlisted companies, participants can invest up to: 

  • $30,000 per participant per year, accruable for unexercised options for up to five years, plus 70% of dividends and cash bonuses; or 
  • Any amount, if it would allow them to immediately take advantage of a planned sale or listing of the company to sell their purchased interests at a profit. 

The Government will also remove regulatory requirements for offers to independent contractors, where they do not have to pay for interests. 

As part of its desire to reform Australia’s regulatory landscape, so as to ensure that the national economy “remains productive, competitive and agile”, the federal government is pledging $11.2 million over five years to continue work in reducing the regulatory burden for business arising from compliance with mandatory safety and information standards under Australian Consumer Law. 

And to support female founders and entrepreneurs, a commitment of $106.9 million has been allocated over 5 years from 2021-22 to further promote women in leadership. This includes $9.4 million over 5 years from 2021-22 to bring women into board positions, as well as funding for the Future Female Entrepreneurs program

Summary 

Australia’s 2022-23 federal budget presents opportunities for Australian innovators and researchers in both the private and academic space to commercialise their intellectual property assets. 

Griffith Hack is committed to working with our clients to take advantage of the measures included in this year’s budget, as well as working with Australian industry and the Federal Government to achieve innovation outcomes.

Our understanding of the way intangible assets and intellectual property in all its manifestations can underpin success, and our long track record in working with Australia’s innovation sector – large and small – place us in an ideal position to work with innovators. For more information or assistance, generally and particularly on the Government’s initiatives in the patent box regime, please contact us

A series of trade marks disputes over coffee products provides important learnings for businesses looking to register trade marks for consumer goods and services. Gavin Adkins, Jacqueline Simpkin and Aimee Foster discuss three decisions involving Energy Beverages and Cantarella Bros.

Background

Energy Beverages LLC (Energy Beverages) is the owner of a number of registered trade marks for its energy drinks, including the word marks “MOTHER”, “MOTHER LOADED ICED COFFEE”, and “MOTHERLAND” (the Mother Marks). The trade marks were registered in respect of goods including energy drinks, coffee and milk-based beverages as well as chocolate, ice cream and tea.

In 2017, Cantarella Bros Pty Ltd (Cantarella) applied to register “MOTHERSKY” for various coffee products and related services in support of a new line of roasted and pre-ground coffee beans. This resulted in the following decisions:

Similar goods

Energy Beverages opposed the MOTHERSKY registration arguing that it is deceptively similar to one or more of the Mother Marks pursuant to section 44 of the Trade Marks Act 1995 (Cth).

Cantarella applied for the MOTHERSKY registration in respect of class 30 goods, including coffee, coffee beans and chocolate. The MOTHER and MOTHERLAND marks are registered in class 32 for beverages including energy drinks, soft drinks, and fruit drinks. Justice Halley distinguished this class of goods from coffee, coffee beans and chocolate by the manner in which customers perceive and shop for those products. In particular, his Honour considered that MOTHERSKY products are either displayed by baristas in cafes or available for purchase in the tea and coffee aisle of a supermarket. Energy drinks are purchased through different channels, and are available in the soft drink aisle or fridges of a supermarket or convenience store along with other to ready to drink beverages. Justice Halley emphasised the customer experience with the MOTHERSKY goods would be very different, and would commonly occur within a café or restaurant environment.

His Honour also considered that the distinct manufacturing processes involved in the production of pure coffee products, specifically roasting and grinding, have no parallels with ready to drink beverages like energy drinks. His Honour held that the categories could not be considered “similar goods” as there was no significant overlap in the marketing, trade channels or sales of coffee and energy drinks.

The MOTHER LOADED ICED COFFEE registration and the MOTHERSKY application both apply to goods in class 30, including coffee and chocolate products. Justice Halley considered that only goods sold under the MOTHER LOADED ICED COFFEE mark could be at risk of being confused by consumers if the marks were deceptively similar.

Likely to deceive or cause confusion

Energy Beverages sought to rely on its extensive reputation in the Mother Marks to argue that there is a real danger that consumers would be confused as to the origin of Cantarella’s MOTHERSKY products. Justice Halley confined Energy Beverages’ reputation to energy drinks only. It did not extend to other beverage types. His Honour considered that the customer’s association between energy drinks and the word MOTHER was further limited by the stylised gothic font, and not the word alone. The recollection of the stylised MOTHER device, and the fundamentally different markets of the two brands lead Halley J to find that there was no tangible threat of deception. 

In any event, his Honour did not consider that MOTHERSKY was deceptively similar to any of the Mother Marks. The MOTHERSKY mark exists in the abstract; it conveys a vastly different meaning from the ordinary word MOTHER. Justice Halley noted that MOTHERLAND has a pre-existing meaning and is not an imaginative word like MOTHERSKY. There is a memorable difference between the ideas conveyed by the marks. Further, the visual differences of the extra letters between MOTHER and MOTHERSKY prevent confusion in the imperfect recollection of consumers.

His Honour considered that the phonetic differences between the impression left by each of the MOTHER LOADED ICED COFFEE and the MOTHERSKY marks were significant aural dissimilarities. The inclusion of MOTHER as one of four components of MOTHER LOADED ICED COFFEE mark does not negate from the visual dissimilarity of a four-word phrase compared with a standalone word, MOTHERSKY. Justice Halley was not satisfied that there was an overarching resemblance between the marks giving rise to deceptive similarity.

Non-use defence

Energy Beverages challenged the Registrar’s decision to remove the MOTHERLAND and MOTHER LOADED ICED COFFEE marks from the Register. Energy Beverages had registered MOTHER LOADED ICED COFFEE more than ten years prior and failed to prove any actual use or intention to use the mark in that period. Rather, the company relied on its desire to preserve its ability to innovate into surrounding beverage markets but was unable to couple this desire with any evidence of preparatory steps in the relevant period. From this, his Honour inferred that Energy Beverages lacked a good faith intention to use the mark at the time of filing. 

Energy Beverages clearly used its MOTHERLAND mark in a promotional campaign in 2010. A video of the advertisement is available on YouTube and two users commented in the relevant period (see here). Energy Beverages argued that this was evidence of use of its trade mark. His Honour was not satisfied that a retired promotion that had been inadvertently left online could constitute use as there was no active or purposeful commercial engagement or promotion of this trade mark.  His Honour also held that the MOTHERLAND mark was not used as a trade mark in the commercial; the emphasis was on the stylised MOTHER device, which was the most distinctive constituent of the mark. The non-use findings were maintained with reference to the Registrar’s overarching obligation to clear the Register of unused marks.

Use of MOTHER logo in MOTHERLAND mark in the YouTube video

Lessons learned

Companies may choose to register trade marks for goods and services that are not currently used for a variety of reasons. However, this decision acts as a warning that:

  • merely seeking to preserve an opportunity to innovate in the future does not amount to a genuine intention to use a trade mark; and
  • use as a trade mark is not established solely through evidence that an old advertisement remains available online.

Energy Beverages has nonetheless lodged an application for leave to further appeal the decision to the Full Court of the Federal Court and we will provide a further update if the position changes.