FEDERAL COURT OF AUSTRALIA

The a2 Milk Company Limited v LD&D Australia Pty Ltd [2021] FCA 1515

ORDERS

THE COURT ORDERS THAT:

1.    The appeals from the decisions of the delegates of the Registrar of Trade Marks given on 22 July 2019 in respect of trade mark application no 1708342 and on 3 June 2019 in respect of trade mark application no 1751238 be allowed.

2.    The decisions be set aside.

3.    The trade mark applications the subject of the appeals proceed to registration.

4.    No orders be made as to costs.

Note:    Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BROMWICH J:

1    The milk that cows produce contains a number of different proteins, amounting to some 3.3% by weight of the milk. These proceedings concern a subset of those proteins that amount to less than 1% of cows’ milk by weight. In particular:

(a)    most of the proteins in cows’ milk are known as caseins, divided in to several families known as alpha-, beta- and kappa-caseins, amongst others;

(b)    bovine beta-caseins comprise less than 1% of cows’ milk by weight;

(c)    there are at least 12 known variants of bovine beta-casein;

(d)    as relevant to these applications and appeals, in the scientific literature one such bovine beta-casein variant is known as A1, and another such variant is known as A2, which can also be rendered as A1 and A2;

(e)    a naming convention of using just A1 or A1, is not scientifically unique to bovine beta-casein, such that scientists would not use a naming convention such as “A1” or “A1 protein” on its own; there are also A variants of kappa-casein.

2    A2 protein is apparently the original beta-casein protein in cows’ milk, but additional proteins have emerged over time as a result of genetic mutation. The applicant’s milk and milk products contain A2 proteins, in common with nearly all other cows’ milk. What distinguishes the applicant’s milk and milk products is that they do not contain A1 proteins. A1 proteins are said to produce digestive problems for some consumers, and milk without A1 proteins are accordingly preferred by some consumers. Thus, curiously, the use of A2 is intended to highlight or signify the absence of A1 protein, the presence of A2 protein not being a distinguishing feature. There is a significant marketing advantage in the applicant having a trade mark monopoly in the use of A2 as a brand name.

3    The applicant has no objection on trade mark grounds to the use of “A2” by third parties, where it is used descriptively to refer to that protein. However, the applicant objects to the use of “A2” or “a2” as a brand, or part of a brand, for other milk and milk products of other producers. It is protection against that use which was sought to be achieved by the two trade mark applications which are the subject of these two related proceedings.

4    The applicant brings two appeals under s 56 of the Trade Marks Act 1995 (Cth) from decisions of two separate delegates of the Registrar of Trade Marks. The delegates had upheld the respondent’s opposition to separate trade mark applications for the words “a2 Milk” and “TRUE A2” under s 41 of the Trade Marks Act.

5    The appeals have resolved inter partes. The respondent, a trade competitor of the applicant in relation to milk and milk products, no longer wishes to take any part in either proceeding and has consented to orders being made allowing the two appeals, setting aside the delegates’ decisions, ordering that each trade mark application proceed to registration, and making no order as to costs. A similar situation occurred in Société des Produits Nestlé SA v Aldi Stores (A Limited Partnership) [2010] FCA 218 per Nicholas J (Nestlé v Aldi), which did not proceed to a hearing, and in Mars Australia Pty Ltd v Société des Produits Nestlé SA [2010] FCA 639; 86 IPR 581 per Bennett J (Mars v Nestlé), which resolved during the course of a contested trial after numerous hearing days.

6    In both Nestlé v Aldi and Mars v Nestlé, the Registrar provided a letter indicating no opposition to the decision of the delegate being set aside, which would lead to registration due to there being no continuing opposition to that taking place. That letter was given to the trial judge in each case, and was given a degree of weight in making orders that each application proceed to registration. The applicant sought a similar letter in this case, expressly relying upon what had happened in Nestlé v Aldi and Mars v Nestlé. However in this case, a Deputy Registrar concluded that the Registrar was “unable to issue a letter indicating that she has no objection to the decisions of her Delegates being set aside”, having:

(a)    referred to the Registrar’s position arising from each delegate’s decision that registration be refused under s 41 on the basis of evidence and submissions then before the Registrar;

(b)    taken into account the public interest in dealing with each application expeditiously rather than pursuing them through this Court;

(c)    noted that the ground of opposition was an absolute public interest ground, not able to be answered by an agreement between two traders (that is, the present parties), in contrast to a relative ground of opposition such as under s 44 where the agreement of the parties would be given greater weight; and

(d)    referred to the applicant’s reference to more extensive evidence before this Court than was before the delegate “relating to the threshold question of distinctiveness (not whether the trade mark is adapted to distinguish)”, observing that the appeals had not been heard and none of the evidence had been read, and noting that although that evidence had not been read, it appeared to differ from that before each delegate, and concluded that whether that “alters the outcome on the initial question of whether a trade mark is capable of distinguishing the designated goods is now a matter for the court”.

7    Through an email from my associate, I indicated to the applicant (copied to the respondent) that, while I was willing to make orders by consent allowing each appeal, setting aside each of the delegates’ decisions, and making no order as to costs, I was not willing to make a consent order that each trade mark application proceed to registration in light of the public interest concerns expressed by the Deputy Registrar. In reply, the applicant raised a concern that it was not clear that this Court would have power to remit the extant applications for registration for further determination, but even if there was such a power, expressed concern that the Registrar might be considered functus officio in relation to each application. That latter concern was recast at the hearing to refer to the role of the Registrar being exhausted in relation to s 41 in the absence of an opponent, leaving nothing for a delegate to determine. Either way, the applicant remained concerned at the uncertainty attendant upon orders for registration not being made.

8    Upon reflection, I can see that the Deputy Registrar’s letter left the applicant with some legitimate uncertainty as to what would happen if the delegates’ decisions were set aside, and if no orders as to the applications proceeding to registration were made. That letter perhaps indicated a view that the now abandoned opposition to registration under s 41 might still somehow have some work to do on public interest grounds, or at least in some other way impede the progress towards registration. The possible reasoning and the likely outcome were not clear.

9    Noting the concerns raised by the Deputy Registrar about the s 41 grounds and the question of public interest, the applicant asked whether the Court would be willing to consider the evidence that had been filed, receive written submissions and hear any necessary oral submissions, albeit without opposition from the respondent. The respondent did not object to this course but again did not wish to participate.

10    Having regard to the de novo nature of each appeal proceeding I decided to accede to the applicant’s request in the interests of certainty and finality. I therefore received from the applicant a comprehensive court book of just under 5,000 pages containing the relevant decisions and detailed affidavit evidence, together with concise but detailed submissions referring to key aspects of that evidence and relevant authority. A hearing took place with the applicant represented by senior and junior counsel.

11    Section 41 of the Trade Marks Act at the time of the filing of the trade mark applications (and unchanged at the time of the hearing) provides as follows:

41  Trade mark not distinguishing applicant’s goods or services

(1)    An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

Note:          For goods of a person and services of a person see section 6.

(2)    A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(3)    This subsection applies to a trade mark if:

(a)    the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)    the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(4)    This subsection applies to a trade mark if:

(a)    the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b)    the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i)    the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii)    the use, or intended use, of the trade mark by the applicant;

(iii)      any other circumstances.

Note 1:    Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)    the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)    the time of production of goods or of the rendering of services.

Note 2:    For goods of a person and services of a person see section 6.

Note 3:    Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).

(5)    For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:        For applicant and predecessor in title see section 6.

Note 2:    If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

12    The applicant’s cascading arguments based upon s 41 are:

(a)    primarily, each trade mark is sufficiently inherently adapted to distinguish the designated goods from the goods of other persons – that is, that neither s 41(3) nor s 41(4) being engaged, the Court need inquire no further, and should therefore order that the applications proceed to registration;

(b)    alternatively, each trade mark is to some extent inherently adapted to distinguish the designated goods from the goods of other persons (so as to exclude the operation of s 41(3)), and each trade mark will also distinguish the designated goods as being those of the applicant having regard to the combined effect of:

(i)    the extent to which each trade mark is inherently adapted to distinguish the goods from the goods of other persons;

(ii)    the use, or intended use, of each trade mark by the applicant; and

(iii)    other circumstances,

so as to also exclude the operation of s 41(4), such that the Court should order that the applications proceed to registration;

(c)    further and in the alternative, the applicant has used each trade mark before the filing date (20 July 2015 for “a2 Milk” and 9 February 2016 for “TRUE A2”) to such an extent that each trade mark did in fact distinguish the designated goods as being those of the applicant as at the application/priority date, such that the Court should order that the applications proceed to registration.

As it transpired, the last point at (c) above does not need to be addressed.

13    I consider it appropriate to make a number of preliminary observations.

14    First, the applicant submits that the approach taken in Nestlé v Aldi and in Mars v Nestlé will suffice in each of the present closely related cases, which are more like the latter scenario. The applicant submits that little more is needed than the brief application of relevant principles to the facts and the evidence. The problem I have with accepting that approach, if taken too literally, is primarily that each of those cases were quite different from the present.

15    In the case of Nestlé v Aldi, the dispute concerned a trade mark application for the shape of goods (confectionary known as KitKat) which resolved before trial. Nicholas J considered the lack of opposition by the Registrar to be of some importance, and also found that it was in no sense self-evident that the mark should not be registered.

16    In the case of Mars v Nestlé, the dispute concerned registration of a particular shade of purple in relation to cat food packaging. The appeal from the Registrar’s upholding of an objection pursuant to s 41 went to trial but resolved after a significant number of hearing days. Bennett J found that the evidence established that as of the priority date, the applicant’s use of the mark had made the particular shade of purple capable of distinguishing its goods. Her Honour found that in the absence of opposition from the respondent or from the Registrar, there was no good reason to refuse to allow the trade mark to proceed to registration, citing Nestlé v Aldi in support of that approach.

17    In the present cases, there are extant and apparently maintained findings by delegates that the grounds of objection under s 41 have been established. There also remains a question of public interest to be resolved. Accordingly, in my view, the approach taken in both Nestlé v Aldi and Mars v Nestlé cannot safely dictate the approach to be taken here, at least insofar as the Court is called upon to make an order in the case of each application that would lead to registration of the two trade marks. In those circumstances there was no real practical alternative but to determine whether there was any s 41 impediment to registration, in light of the further evidence adduced, before making the additional order sought.

18    Secondly, the applicant submits that because of the substantial additional evidence before the Court that was not available to the Registrar, the weight to be given to each delegate’s decision is “necessarily quite limited”. Having read the reasons of each delegate, I am not satisfied that is so, not least because numerous points made by the delegates continue to have relevance and are not necessarily to be discarded by reason of the additional evidence adduced. Each are reasoned decisions, to which I propose to give the usual degree of weight as opinions of skilled and experienced persons, without necessarily agreeing with them or any of the conclusions reached: see the Full Court decision in Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 at [33] per French J (with whom Tamberlin J agreed, Branson J dissenting). As French J observed, weight can be given to the Registrar’s opinion without compromising the Court’s duty to construe the relevant legal criteria.

19    The factual judgment of the delegate can properly be treated as a factor relevant to the Court’s own evaluation of the material before it, still falling well short of applying any kind of doctrine of deference by the judiciary to executive expertise, sometimes called the Chevron doctrine after Chevron USA Inc v National Resources Defense Council Inc, 467 US 837 (1984). As Derrington J observed in Tohi v Minister for Immigration, Citizenship, Migrant Services and Multicultural Affairs [2021] FCAFC 125 at [36], that doctrine has no application in Australia, citing Corporation of the City of Enfield v Development Assessment Commission [2000] HCA 5; 199 CLR 135. However as Gleeson CJ, Gummow, Kirby and Hayne JJ observed in Enfield at [45], Registrar of Trade Marks v Muller (1980) 144 CLR 37 at 41 is authority for the proposition that (omitting footnotes)

in a proceeding in the original jurisdiction of a court on “appeal” from that tribunal, the “court should attach great weight to the opinion of the [tribunal]”. That observation was made when dealing with an appeal from a refusal of registration by the Registrar of Trade Marks where the issue was whether a proposed trade mark was distinctive and ought to have been registered.

Sufficiently inherently adapted

20    It is not in doubt that the presumption of registrabilty in s 33 of the Trade Marks Act applies to s 41, provided the application for registration is made in accordance with that Act. In the absence of an opponent, this produces a curious position whereby the applicant seeks orders that the applications proceed to registration but bears no onus to demonstrate that s 41 does not apply. Nonetheless the applicant has assisted the Court to a considerable degree, wisely advancing its own interests.

21    The long-standing test for “adapted to distinguish” for the purposes of s 41 was explained by Kitto J in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 at 514. This was quoted and adopted with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48; 254 CLR 337 at [26], where the plurality concluded that the assessment was to be made (emphasis added and spelling modernised by the latter High Court):

by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

22    In Cantarella, the plurality concluded that the emphasised words above were essential to the test: see Cantarella at [28]-[29], [70]. In other words, they accepted the proposition that the inherent adaptability of a trade mark consisting of a word is to be tested by checking the ordinary meaning (that is, ordinary signification) of the word to anyone purchasing, consuming or trading in the relevant goods. The plurality, in reasoning to that conclusion, observed (omitting footnotes):

[57]    In Clark Equipment, Kitto J considered for the purposes of registration in Pt B the word “Michigan”, which had acquired distinctiveness through twenty years of use in respect of the applicant’s goods despite the fact that it was a geographical name of a State in America. After approving Lord Parker’s test in Du Cros and Hamilton LJ’s observation in R J Lea, his Honour explained that directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly because use of them as trade marks will rarely eclipse their “primary” (that is, ordinary) signification. Such a word, his Honour said, “is plainly not inherently, ie in its own nature, adapted to distinguish the applicant’s goods”. Traders may legitimately want to use such words in connection with their goods because of the reference they are “inherently adapted to make” to those goods. Kitto J’s elaboration of the principle, derived from Lord Parker’s speech in Du Cros, applies with as much force to directly descriptive words as it does to words which are, according to their ordinary signification, geographical names.

…

[59]    The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

…

[71]    As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.

23    In Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205; 124 IPR 264 at [236] the Full Court (Greenwood, Besanko and Katzmann JJ) summarised the principles applying to s 41, especially as they emerged from Clark Equipment and Cantarella, as follows:

(1)    In deciding whether or not a trade mark is capable of distinguishing the designated services from the service of others, the first question is the extent to which the trade mark is inherently adapted to distinguish the designated services from those of others: s 41(2) and (3).

(2)    In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their goods: Clark Equipment Co v Registrar of Trade Marks; (1964) 111 CLR 511; [1965] ALR 344 (Clark Equipment) per Kitto J at CLR 514.

The question of whether a trade mark is adapted to distinguish the services of the applicant is to be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives (in the exercise of the common right of the public to make honest use of words forming part of the common heritage for the sake of the signification which the words ordinarily possess) will think of the word and want to use it in connection with similar goods in any manner which would infringe the trade mark once registered: Clark Equipment at CLR 514.

Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will “rarely eclipse” their “primary” (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, “in [their] own nature”, adapted to distinguish the applicant’s goods. Traders may legitimately want to use such words in connection with their goods or services “because of the reference they are ‘inherently adapted to make’ to those goods”: Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 254 CLR 337; 315 ALR 4; 109 IPR 154; [2014] HCA48 (Cantarella) at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

(5)    The principles derived from the observations of Kitto J in Clark Equipment apply with as much force to directly descriptive words as they do to words which are, according to their ordinary signification, geographical names: Cantarella at [57].

(6)    In determining whether a word is (or words are) inherently adapted to distinguish the goods or services of an applicant, the question is to be examined from the point of view of the “possible impairment” of the rights of “honest traders” and from the “point of view of the public”: Cantarella at [59].

(7)    In determining whether a word contains (or words contain) a “direct reference” to the relevant goods or services (and thus prima facie not registrable as a trade mark) or whether the word (or words) makes a “covert and skilful allusion” to the relevant goods or services (and thus prima facie registrable as a trade mark), the “ordinary signification” of the word or words to persons who will purchase, consume or trade in the goods or services, must be considered: Cantarella at [59].

(8)    Where the question is whether there are other traders who may legitimately want to use or apply a word or words in connection with their goods or services (other than a geographical name or a surname), the test refers to the “legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods”: Cantarella at [59].

(9)    Consistent with the proposition at (7), the test described at (8) does not encompass the desire of other traders to use a word or words which in relation to the goods or services are “allusive or metaphorical”: Cantarella at [59].

(10)    In determining whether a trade mark is inherently adapted to distinguish the designated goods or services for the purposes of s 41(3), the ordinary signification of the word or words are to be considered from the perspective of “any person in Australia concerned with the goods or services to which the trade mark is to be applied”: Cantarella at [70].

(11)    Consideration of the “ordinary signification” of any word or words said to constitute a trade mark is “crucial”: Cantarella at [71]. That is so whether the word (or words) is said not to be registrable because: it is not an invented word and has direct reference to the character or quality of the goods or services; or, the word is laudatory; or, the word is a geographical name; or, the word has either lost its distinctiveness or it never had the requisite distinctiveness from the outset: Cantarella at [71].

(12)    The process of reasoning in addressing s 41(3) of the Act involves first identifying the “ordinary signification” of the word in question and then undertaking an enquiry into whether other traders might legitimately need to use the word in respect of their goods: Cantarella at [71]. If a word contains an allusive reference to goods or services it is, prima facie, qualified for the grant of a monopoly as a trade mark under the Act. If, on the other hand, the word is understood, by the target audience, as having a directly descriptive meaning in relation to relevant goods or services then, prima facie, the proprietor is not entitled to a monopoly in respect of the word. As a general proposition, a word or words which are prima facie entitled to a monopoly secured by registration as a trade mark under the Act, according to this method, are inherently adapted to distinguish: Cantarella at [71].

24    Before both delegates, the respondent asserted that the ordinary meaning of the expression “a2 milk” was to be derived from the dictionary definition in the Macquarie Dictionary, namely “noun milk which contains only A2 beta-casein proteins, thought to be less allergenic than milk which contains A1 proteins”. The applicant contended before one of the delegates, and continues to contend, that no weight should be given to that definition. In support of that argument, it cites the view expressed about that dictionary at first instance in Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823 at [605]-[629], an aspect of that decision that overtly was not disturbed on appeal: Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; 261 FCR 301 at [130].

25    The “a2 milk” application delegate did not consider the criticism in Moroccanoil was any general statement about that dictionary. In any event she found that even if the definition was entirely put to one side, there was still a need to resolve the dispute as to the meaning of “a2”, it being accepted that the meaning of milk in context was a white consumable liquid. The dictionary definition dispute does not require resolution as there was no contradictor and the editors did not have a chance to defend their position. Moreover, I did not find the dictionary definition especially helpful, not least because, despite its apparent literal inaccuracy, it seems to me to accord with the way in which the applicant in fact markets its milk and milk products as containing only A2 protein.

26    After referring to the evidence, the delegate determining the “a2 Milk” application concluded that the expression in the trade mark registration applied for, “a2 Milk”, would generally have been understood at the filing date as indicating that the milk component of the designate goods contained the A2 beta-casein protein; and, was an ingredient of the non-milk products. The “a2 Milk” application delegate further considered that it was likely that a portion of consumers of dairy products would have understood “a2 Milk” as indicating that the milk or milk products predominantly or exclusively contained the A2 beta-casein protein.

27    On the question of whether other traders might legitimately desire to use the expression “a2 Milk”, the “a2 Milk” application delegate found that by the filing date it was “somewhat on trend for dairy products, especially milk, to be marketed by reference to the A2 beta-casein protein content” having reproduced a number of packaging examples. The “a2 Milk” application delegate did not consider that this conduct was improperly motivated, and while acknowledging that this may have been emphasised to compete with the applicant’s products, found there was no evidence that other traders had sought to assert a connection between their products and those of the applicant by the use of “A2”.

28    The “a2 Milk” application delegate found that the trade mark was not inherently adapted to distinguish the designated goods, but rather was a combination of words which could not do the job of distinguishing those goods without first educating the public that it is a trade mark, quoting British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 at 306, in which the same conclusion was reached about the word “treat”. Thus the delegate found that s 41(3)(a) was engaged and turned to consider whether s 41(3)(b) was also engaged as to factual distinctiveness as at the filing date. The delegate found very little in the evidence to support such a conclusion, other than for milk, and even then with the use that was made being stylised in a way that was visually striking. The delegate found that it was difficult to conclude that the words “a2 Milk” alone had become distinctive of the applicant’s products. The delegate ultimately found that the trade mark had not been used to such an extent that it did in fact distinguish the designated goods or services as being those of the applicant.

29    The delegate considering the “TRUE A2” application, taking into account the dictionary definition of “a2 milk” referred to above and other evidence, concluded that the marketplace meaning of “A2”, emphasised by the use of the word “true”, is that of a product that does not contain A1 beta-casein protein. The delegate therefore considered that other traders would think of or desire to use the trade mark, or something closely resembling it, without improper motive. The delegate concluded that the “TRUE A2” trade mark was to some extent, but not sufficiently, inherently adapted to distinguish the applicant’s goods from those of other persons, but found that this usage did not go far enough to distinguish the applicant’s goods.

30    The applicant’s case is that the “a2 Milk” brand, and thus also the “TRUE A2” trade mark, is named for the A2 beta-casein variant, being the most common of that class of variants, but neither “a2”, nor “A2”, as appearing as part of the two trade marks sought to be registered, has any particular meaning in itself. Rather, the applicant contends that the evidence in this Court demonstrates that this is at most an allusion to the quality of its products, and does not directly describe the goods. Thus, it is argued, both terms are not directly descriptive of any milk products and are therefore sufficiently inherently adapted to distinguish the applicant’s goods from those of other suppliers.

31    Whether a mark is sufficiently inherently adapted to distinguish turns on the ordinary meaning of the words used without regard to their actual usage. As both accompanying words – Milk and TRUE – are not apt to distinguish in themselves, this turns on the meaning of a2/A2 on their own. That is, the question is whether either rendering is not of itself descriptive of the applicant’s milk or milk products, or of the quality of the applicant’s milk or milk products.

32    Applying the test in Clark Equipment, as approved and explained in Cantarella, and further explained in Accor in terms of practical application, the real question is what meaning a2/A2, ordinarily possess or convey in their own nature, independently of use; and, what properly motivated use other traders may then make of them and that meaning. The use created by the educative effect of the applicant’s own marketing must be excluded from consideration, and is a factor that can only be taken into account if there is a degree, or some extent, of inherent adaption falling short, standalone, of sufficiency. I distinguish below the circumstances in which I have taken these matters into account. However, the primary question remains: as words alone, do a2/A2 amount to a description of the applicant’s products, or are they no more than an allusive reference to them or their quality?

33    I am satisfied, on the evidence before me and without the benefit of contradictory argument, that a2/A2 are in truth made up, in the sense that the evidence (in a background way) reveals that they have their origin in science. Despite the considered views of the two delegates, which I have taken into account and given due weight, by their own nature, a2/A2 do not directly describe the applicant’s products, but rather make an allusive reference to them and their qualities. A use of A2 by another trader to do more than identify that their product contains the A2 bovine beta-casein protein would not be properly motivated and is no reason to deny the applicant registration. Other traders may properly identify that feature, but are not entitled to exploit the applicant’s brand.

34    For completeness, had I fallen short of being satisfied that a2/A2 were sufficiently inherently adapted to distinguish the designated goods as identified in the respective trade mark applications, I would have had little difficultly in the absence of contrary persuasion in excluding the operation of both s 41(3) and s 41(4). There was at least a reasonable extent to which each was inherently adapted to distinguish the goods from those of others, and the evidence clearly established that both the past use prior to the earlier priority date, and the intended continuing use, in combination would operate to distinguish those goods as being those of the applicant, from those of others. This evidence includes:

(a)    detailed historic survey evidence obtained to inform the applicant’s marketing activities (so that they were not prone to fall foul of outcome bias of the kind that can appear in survey for litigation evidence);

(b)    detailed expert lexicology evidence as to the use in the community of those terms, indicating overwhelming association with the applicant’s products;

(c)    expert marketing evidence to analyse the educative, as well as persuasive, impact of the applicant’s advertising and related strategies; and

(d)    visual evidence as to how the applicant’s products appear on supermarket shelves, which make clear that a2/A2 present very much in the manner of a brand, not just a product description.

35    In all the circumstances I am satisfied that it is appropriate to order that each trade mark application proceed to registration.

Associate:

Dated:    3 December 2021