Coffee Chaos Shaking up Trade Mark Law

Prior to the 2023 ruling in Energy Beverages LLC v Cantarella Bros Pty Ltd (‘Energy Beverages’) applicants typically relied on the Nice Classification system to determine which goods and services to include in their trade mark applications—assuming this would secure exclusive rights for those categories.

However, applicants should also consider section 44 of the Trade Marks Act 1995 (Cth), which aims to prevent consumer confusion by blocking trade marks that are considered too similar to existing ones. Although applicants may be aware of section 44, a common misconception is that goods or services listed in different Nice Classifications are automatically considered unrelated. In practice, this isn’t always the case.

IP Australia’s Cross-Class List identifies goods and services that may be considered similar or closely related, even if they fall under different classes. As a result, your application could still be refused if your mark resembles an existing trade mark in a related class.

The Energy Beverages ruling has further blurred the lines between product classifications, making it even more challenging to assess whether goods or services are of the same description—and whether consumer confusion might arise.

The 2023 case of Energy Beverages centred around a dispute between the well-known brand ‘Mother Energy Drinks’, and ‘Cantarella’, a coffee business trading under the Vitttoria Food and Beverage brand. In this decision, the Full Federal Court refused to register Cantarella’s proposed trade mark ‘MOTHERSKY’ in Class 30
(coffee), finding that coffee was a good of the same description as the trade mark ‘MOTHER’ in Class 32 (non-alcoholic beverages). The Full Federal Court particularly noted that simply because a product is classified in one class does not limit the scope of what the trade mark may cover. In this case, it was crucial to consider what the average consumer would generally understand ‘coffee’ to mean—which, in this context, was a non-alcoholic beverage. This is particularly interesting given that, under the Cross-Class List system used by IP Australia, Classes 30 and 32 are not deemed as closely related classes. This suggests that the scope of trade mark similarity may extend beyond what is indicated by the Cross Class List.

Although Cantarella sought special leave to appeal to the High Court, the application was refused on the grounds that the claim lacked strong prospects of success. The principle established in Energy Beverages has since been endorsed in subsequent cases, including the obiter remarks of Rofe J in the 2023 case of Bed Bath ‘N’ Table Pty Ltd v Global Retail Brands Australia Pty Ltd. Similarly, the Full Federal Court applied the Energy Beverages principles in the 2024 case of Killer Queen, LLC v Taylor, noting that the specification of a trade mark registered for ‘clothes’ in Class 25 should be understood to include footwear and headgear, consistent with the ordinary meaning of ‘clothes’.

So, where does this decision leave you? As a starting point, when registering a trade mark, you should check not only for similar trade marks within your selected class but also in any related classes listed on IP Australia’s Cross Class List.

Beyond this, you should consider the ordinary meaning of your good or service—ask yourself whether consumers might associate it with products or services in other classes. If so, it’s essential to check for similar or potentially conflicting trade marks in those areas as well.

We understand the unique challenges you may face as a trade mark applicant when trying to protecting your intellectual property, and we’re committed to helping you secure your rights.

Need advice about registering a trade mark? Contact Chelsea Donoghue for a chat: chelsea@sanickilawyers.com.au