a2 Milk Company’s Trade Mark Opposition Rejected

In Milk New Zealand Dairy Limited v The a2 Milk Company Limited 2023 NZIPOTM 27 the Assistant Commissioner rejected the opposition by the a2 Milk Company (a2MC) against an accepted application by Milk New Zealand Dairy Limited (Milk NZ) that contains ‘A2’ as part of a device mark in relation to various milk and related dairy products in classes 5 and 29.

Background
For about the last decade the a2MC has been active in opposing accepted applications that contain A2, a2 or stylised versions thereof in relation to such milk and dairy products in classes 5, 29 and 30. This was recently canvassed by the same Assistant Commissioner (AC) in decision The a2 Milk Company Limited v Nutricia Limited [2023] NZIPOTM 13 at [114], where it can be seen that many such A2 marks by other parties were abandoned after opposition by a2MC or are currently under opposition. While the a2MC has registrations for plain word marks that prominently contain A2 or a2, on account of descriptiveness objections it has not been able to obtain plain word registrations for various marks, notably including A2, A2 MILK, a2 Milk, a2 Ice Cream or a2Only in relation to various milk and related dairy products. Nonetheless the a2MC continues to refile some of these marks. Despite previous rejections of the A2 MILK mark, in April 2017 it filed for a2 Milk in classes 5 and 29 and have kept the application active by obtaining extensions of time since April 2018. Yet it is not clear what legitimate reason a2MC can have for obtaining so many extensions of time, as they should have had plenty of time to provide any evidence of acquired distinctiveness in the mark. Presumably in the expectation that IPONZ will reject further extensions of time the a2MC refiled the a2 Milk mark in July 2022.

Current Opposition
The a2MC opposed Milk NZ’s application in three ways: (i) section 17(1)(a) – on the basis of deception or confusion occurring in relation to its claimed reputation in a number of unregistered and registered trade marks, including a2, a2 Milk, and The a2 Milk Company and various stylised formats thereof; (ii) section 25(1)(b) – on the basis that Milk NZ’s application is similar to some of a2MC’s registered marks and would cause deception or confusion; and (iii) section 25(1)(c) – on the basis that some a2MC trade marks are well-known in New Zealand and its interests in those marks would be prejudiced by Milk NZ’s use of its mark.  Milk NZ defends its application on the basis that A2 and/or a2 is a descriptive term when used in connection with milk products as it describes a type of milk that contains only A2 beta casein protein and so is not an exclusive indication of a2MC’s milk products. It also contends that the other device elements in its mark dominate and that the mark as a whole is distinctive and so deception or confusion will not be likely.

Milk NZ asserted that A2 is used descriptively by consumers, traders, government agencies, farmers, scientists and academics, nutritionists and health professionals and geneticists and breeders. Examples it gave of descriptive uses of A2 are: A2 milk; A2 type or type A2; A2A2 (commonly referring to genetic status); A2 factor: A2 protein; A2 beta casein; A2 cows; A2 herds; A2 sires; and the A2 debate or A2 theory (over the alleged health benefits). a2MC acknowledged that A2 can be used in a descriptive sense by other traders without improper motive and that some abbreviation of A2 beta-casein such as A2 protein makes it easier for consumers to understand the terms. However, even with such descriptive expressions the a2MC sought to discourage use of a lowercase ‘a’ for the A2 component. It is noteworthy here that when Milk NZ filed this mark it also filed a near equivalent mark, with the only difference being the use of ‘a2’ instead of ‘A2’ in the device mark. The a2MC opposed both marks and Milk NZ withdrew the device mark that used a lowercase ‘a’.

Section 17(1)(a) – Regarding a2MC’s onus of establishing a reputation amongst consumers in relation to its alleged trade marks the AC found that a2MC had no reputation in A2 as a word-only mark as it is descriptive in relation to all beta-casein products with the A2 protein characteristic. While a2MC can establish reputation in relation to A2 in combination with some other word elements or in various stylised formats of A2, these uses also establish descriptive use of A2 on the labelling. The AC found more differences than similarities between both party’s marks, with the similarities essentially attributable to the presence of either A2 or a2. The surrounding circumstances were found to further highlight the public awareness of A2 protein being a characteristic of some milks, leading the AC to conclude on the balance of probabilities that consumers are not likely to be deceived or confused by the use of Milk NZ’s mark. It was also indirectly implied that the AC would have reached the same conclusion had Milk NZ also contested a2MC’s opposition to its device mark that used a lowercase ‘a’.

Section 25(1)(b) – The AC quickly established that Milk NZ’s application is in respect to the same or similar goods as is covered by the various prior marks that a2MC alleged are similar to Milk NZ’s application. In comparing the respective party’s marks, the AC referred to the principles applied by the Court of Appeal in Pharmazen Ltd v Anagenix IP Ltd [2020] NZCA 306 at [47]. One of those principles is that while differences between two marks may be significant, it is the similarities which are most significant, whether visual, audible, distinctive, or conceptual. The AC noted from other precedent that this holds less weight where, as in the current case, the similarity is a descriptive term, which can focus attention to the other parts of the trade marks. Milk NZ’s application is a series mark with two versions of the device mark – one is black, while the other is blue & red. One of a2MC’s a2 device marks is also coloured in similar shades of blue & red. Nonetheless, on an overall comparison the coloured version of Milk NZ’s device mark was not considered similar to a2MC’s blue & red a2 device mark. A2MC’s other cited marks all had additional text which, with the exception of the a2 Milk mark, contributed to the distinctiveness of the mark, and the additional text in Milk NZ’s mark was not similar to any of those a2MC marks. After considering each of a2MC’s mark in turn the AC concluded Milk NZ’s mark was unlikely to result in confusion or deception, predominantly because the A2 element in Milk NZ’s mark conveys the characteristic of the product not some type of joint branding or association with a2MC.

Section 25(1)(c) – The AC found the evidence provided did not establish well-known status for any of a2MC’s asserted trade marks, noting that the evidence lacked any survey, expert, retailer or other such evidence which could be used to establish whether a2MC’s marketing efforts made any of its marks well-known. The AC went on to state that if wrong in that finding he would not have found a2MC’s interests to be prejudiced as the lack of detailed submissions or evidence in that regard meant such an inference was unwarranted.

Concluding Remarks
The AC found little in the way of merit in any of a2MC’s grounds for opposing Milk NZ’s application. While this opposition was not about the registrability of a2MC’s application(s) for a2 Milk, the AC commented that the evidence provided in the opposition regarding the distinctiveness of that mark did not satisfy him that distinctiveness had been attained.

Author: Quinn Miller

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