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Epic trademark battle for coffee energy drink supremacy

By James Wan

What you need to know (in a nutshell)

  • A series of trademark disputes involving Energy Beverages and Cantarella Bros provided important learnings for businesses seeking to register trademarks for consumer goods and services.
  • The products at issue were energy drinks and coffee, and the main point of contention was whether the products were “similar goods.”
  • Energy Beverages argued that the MOTHERSKY trademark was deceptively similar to its own MOTHER marks, but the court found that the products were not “similar goods” and that there was no significant risk of confusion among consumers

Full Article

The trademark dispute across 3 trademark decisions regarding Energy Beverages LLC and Cantarella Bros Pty Ltd for coffee products can guide the strategy of other companies registering trademarks in consumer goods/services.

Energy Beverages LLC owns registered trademarks, the Mother Marks (MOTHER, MOTHER LOADED ICED COFFEE and MOTHERLAND), for goods such as energy drinks, coffee beverages, milk-based treats like chocolate or ice cream and tea.

In 2017, Cantarella Bros Pty Ltd attempted to register “MOTHERSKY” for coffee-related products and services as they launched a new range of roasted and pre-ground beans.

Similar products

Energy Beverages contested the MOTHERSKY registration, citing similarity to one or more ‘Mother Marks’ as per section 44 of Australia’s Trademarks Act 1995.

Justice Halley ruled in favour of Cantarella’s application for MOTHERSKY registration regarding coffee, beans and chocolate (trademark class 30). This was done by distinguishing class 32 beverages such as energy drinks from these items. He pointed out that customers perceive or shop differently when purchasing class 30 products which are usually found with baristas at cafes/coffee aisles versus the latter being available at soft drink sections & fridges elsewhere. Accordingly, Halley J stressed how customer experience would be dissimilar considering their buying habits within cafe/restaurant settings compared to other beverages sold alongside ready-to-drink options.

Halley J thought that coffee, which requires roasting and grinding processes not found in ready-to-drink energy drinks, was dissimilar from these beverages. He determined that the two items lacked significant overlap in sales or marketing channels and thus could not be deemed “similar goods”.

Halley J noted that the MOTHER LOADED ICED COFFEE trademark and the MOTHERSKY app pertain to goods in class 30, such as coffee and chocolate. He determined only products sold under the first mark could be confused by consumers if they had a deceptive resemblance.

Whether the trademark is likely to deceive or cause confusion

Energy Beverages had hoped to utilize their well-known ‘Mother Marks’ for energy drinks, asserting that there might be confusion regarding the source of Cantarella’s MOTHERSKY products. However, Halley J ruled Energy Beverage’s fame was only in terms of energy beverages and not other types; customers would also remember its stylised gothic font associated with it rather than just the word alone. Hence due to the different industries involved and this visual reminder, Halley J concluded no risk existed where consumers are misled as to origin or affiliation.

Halley J concluded there was no likelihood of confusion between the Mother Marks and MOTHERSKY. The latter conveyed a substantially different concept than just ‘mother’ due to its creative spelling, plus it had an existing meaning distinct from that word. Additionally, people would not mistake one for the other because seeing them side-by-side