Coca-Cola successfully opposes registration of NAUGHTY MOTHER

In The Coca-Cola Company v Shea ([2009] ATMO 49, June 30 2009), the delegate of the registrar of trademarks has upheld an opposition against the registration of the trademark NAUGHTY MOTHER.

On December 24 2006 Matthew Shea applied to register the trademark NAUGHTY MOTHER in Australia for non-alcoholic beverages including soft drinks, energy drinks, fruit drinks and flavoured water in Class 32 of the Nice Classification. The Coca-Cola Company opposed the application. The primary ground of opposition was based on Section 44 of the Trademarks Act 1995 (Cth): Coca-Cola argued that NAUGHTY MOTHER was deceptively similar to its three MOTHER device marks, which are registered in Class 32 in respect of similar goods.

To support its contention, Coca-Cola argued that consumers of its product would ask for a 'Mother', which word was common to both Coca-Cola’s device marks and the mark applied for. Therefore, according to Coca-Cola, confusion could arise in the marketplace and use of the mark would be likely to deceive or cause confusion. The NAUGHTY MOTHER mark thus fell within the definition of ‘deceptively similar’ under Section 10 of the act.

Coca-Cola also submitted that the word 'mother':
  • was the “essential feature” of its MOTHER device marks; and
  • is a highly memorable and distinctive word, particularly in the context of the goods covered by its registrations (ie, non-alcoholic drinks).
Interestingly, Coca-Cola also submitted that the distinctiveness of the word 'mother' as part of its device marks was reinforced by the unexpected contradiction introduced by way of the graphics, which featured what the delegate described as “a monster, a Venus fly-trap and thorny flowers”. Coca-Cola submitted that Shea, in seeking to register the NAUGHTY MOTHER mark, also introduced a shocking and unexpected contradiction in that “naughtiness” is the antithesis of the stereotypical kind of loving mother.

The delegate concluded that:
  • NAUGHTY MOTHER and Coca-Cola’s MOTHER marks were deceptively similar; and
  • there was a real risk that a number of consumers would be led to wonder whether Shea’s Naughty Mother drinks and Coca-Cola’s Mother drinks came from the same source.
The delegate considered that this real, tangible risk of confusion arose because the marks shared the same dominant word in respect of the same goods. The delegate also accepted Coca-Cola’s argument that an unexpected or “even shocking” contradiction in both parties’ marks may contribute to actual confusion in the marketplace.

Perhaps the most interesting aspect of this decision is the interpretation of device marks and their meaning - that is, the direct comparison of the word 'naughty' as used by Shea and the device elements of Coca-Cola’s marks, both of which were considered to be contradictory to the word 'mother'. This might suggest that a very significant range of what might otherwise be seen as distinctive words may also be considered as a contradiction to the term 'mother' and, therefore, deceptively similar to Coca-Cola’s device marks.

The decision demonstrates how the scope of protection offered by a device registration may in some aspects be more extensive than that afforded by a word registration, as the device elements may be subject to a broad interpretation.

Chrystal Dare, Corrs Chambers Westgarth, Melbourne

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