In The a2 Milk Company Limited v LD&D Australia Pty Ltd [2021] FCA 1515, the a2 Milk Company Limited (“applicant”) brought two appeals from decisions of two separate delegates of the Registrar of Trade Marks. Both delegates upheld oppositions from LD&D Australia Pty Ltd (“respondent”) to trade mark applications for marks “a2 Milk” (1708342) and “TRUE A2” (1751238) under s 41 of the Trade Marks Act 1995 (Cth)(“TMA”).

Federal Court of Australia

Judge: Bromwich J

Date of Judgment: 3 December 2021

Appeal from:
LD&D Australia Pty Ltd v LD&D Australia Pty Ltd [2019] ATMO 85 (TM 1751238)

LD&D Australia Pty Ltd v LD&D Australia Pty Ltd [2019] ATMO 110 (TM 1708342)

The parties resolved the appeal by consent and the respondent withdrew opposition to both trade mark applications and did not want to take part in either proceeding. The appellant sought a letter from the Registrar, similar to Nestle v Aldi^[1] and Mars v Nestle^[2], indicating no opposition to the delegates’ decision being set aside and consequently allowing the Federal Court to allow the appeals and ordering both trade mark applications to proceed to registration. 

Unlike in Nestle v Aldi and Mars v Nestle, the Deputy Registrar concluded in this case that the Registrar was “unable to issue a letter indicating that she has no objection to the decisions of her Delegates being set aside” at [6], having referred to each delegate’s decision to refuse registration under s 41 on basis of evidences and submissions before the Registrar and noted that the ground of refusal under s 41 was an absolute one instead of a relative ground where mutual consent by parties could be afforded greater weight and in the interest of public, more extensive evidences be adduced and heard before the Court to determine whether “a2 Milk” and “TRUE A2” are capable of distinguishing its designated goods.

In light of the concerns raised by the Deputy Registrar, Justice Bromwich was unwilling to make a consent order to allow each trade mark application to proceed to registration. The applicant submitted that the Registrar might be considered “functus officio” in each application. In the interest of the public, his Honour was not prepared to cast aside uncertainty surrounding the ground of opposition under s 41 but acceded to the applicant’s request to consider evidence that had been filed, receive written submissions and hear any necessary oral submissions without opposition from the respondent. There was no objection from the respondent. 

“a2 Milk” Mark 

Ordinary Significance Test

Having considered the evidence, the delegate had earlier concluded that “a2 Milk” would generally have been understood as indicating that the milk component of the designated goods contained A2 beta-casein protein, and, was an ingredient of the non-milk products. Consumers would likely have understood “a2 Milk” as indicating the milk or milk products containing predominantly or exclusively A2 beta-casein protein. 

Other Traders Test

The delegate found at the filing date of the application that there was no evidence that other traders had sought to assert a connection between their products and those of the applicant through the use of “A2”. There were however uses of “A2 beta-casein protein content” by other traders as part of their description of the contents of their milk or diary products.

The delegate concluded that the “a2 Milk” fell within the ambit of s 41(3)(a) and found little in evidence to support factual/acquired distinctiveness through use before the filing date – to invoke s 41(3)(b). The delegate had earlier concluded 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.

“TRUE A2” Mark

Ordinary Significance Test

The delegate considered the meaning of A2 in the marketplace and the use of the word “true” and took the view the meaning conveyed could have been a product that does not contain A1 beta-casein protein.

Other Traders Test

The delegate considered that other traders without improper motive would desire to use “TRUE A2” as a trade mark or something close to it and concluded that the “TRUE A2” was to some extent but not sufficiently, inherently adapted to distinguish the applicant’s goods from those of other traders.

Before the Federal Court

Justice Bromwich took the view that “MILK” and “TRUE” in the respective marks were not inherently adapted to distinguish its designated goods. The issue before the Court was to determine if a2/A2 was directly descriptive of any milk products and/or of the quality of applicant’s milk and milk products; or was it merely making allusive reference to them or their qualities. 

His Honour was satisfied, based on the evidence adduced and considered the views of the delegates of the Registrar that it was the latter – the use of a2/A2 was an allusive reference to them or their quality and other traders may use the A2 to indicate their product contain A2 bovine beta-casein protein but not as a source identifier. Therefore “A2 Milk” and “TRUE A2” were taken to be sufficiently inherently adapted to distinguish the applicant’s goods from those of other suppliers. His Honour also noted at [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.

The evidence included:

(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.

The Federal Court consequently ordered each of the trade mark application to proceed to registration.

Disclaimer: The above is provided to assist in the understanding of the decision by the Federal Court of Australia. It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.

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^[1] Société des Produits Nestlé SA v Aldi Stores (A Limited Partnership) [2010] FCA 218

^[2] Mars Australia Pty Ltd v Société des Produits Nestlé SA [2010] FCA 639