The Full Federal Court’s decision in Energy Beverages LLC v Cantarella Bros Pty Ltd [2023] FCAFC 44 provides a striking reminder of two recurring themes in Australian trade mark law, i.e. first, that non-use will not be excused simply because a brand owner clings to legacy advertising content; and second, that the boundaries of “similar goods” are not dictated by Nice classifications solely but by commercial reality. The dispute pitted the owner of the well-known MOTHER energy drink brand against Cantarella, a prominent coffee supplier, over the fate of two contested marks, i.e. MOTHERLAND and MOTHERSKY. The result was a split outcome. The court confirmed the removal of MOTHERLAND for non-use, but it allowed Energy Beverages’ appeal opposing MOTHERSKY, clarifying the scope of “similar goods” and the significance of ordinary commercial understanding.
Background to the Dispute
Energy Beverages LLC (EB), owner of the MOTHER brand, had acquired its rights from The Coca-Cola Company in 2015. The MOTHER range of energy drinks had been heavily promoted across Australia since 2007, with brand extensions such as MOTHER BIG SHOT, MOTHER LOW CARB, and MOTHER TROPICAL BLAST. At the heart of EB’s case were two marks: MOTHERLAND, registered in Class 32 for a range of non-alcoholic beverages, and MOTHER, registered for an almost identical set of goods.
Cantarella, best known for its Vittoria coffee brand, applied to register MOTHERSKY in Class 30 for coffee and chocolate products. EB opposed the application, relying on section 44, section 60 and section 42(b) of the Trade Marks Act 1995 (Cth), while Cantarella retaliated by seeking to remove MOTHERLAND for non-use under section 92(4)(b).
The initial delegate’s decisions went in Cantarella’s favour. The primary judge upheld those findings. EB then sought leave to appeal to the Full Federal Court, which delivered the judgment under commentary.
The “MOTHERLAND” Non-Use Application
The question for the court in relation to MOTHERLAND was whether EB had actually used the mark during the relevant three-year period of non-use (January 2016–January 2019). EB’s evidence relied heavily on the remnants of a once-vigorous campaign: the “MOTHERLAND” television commercial, various social media posts, and an “About” page description on its YouTube channel.
The Full Court agreed with the primary judge that none of these amounted to genuine trade mark use. The commercial itself dated back to 2011, well before the relevant period. Its continued presence on YouTube and Facebook did not, without more, establish use in the course of trade. As the Court emphasized, mere online availability is not use unless it can be shown that the content was accessed by Australian consumers in connection with ongoing trade in the registered goods.
The deeper problem, however, was one of substance rather than timing. The Court found that “MOTHERLAND” was used in the commercial not as a badge of origin but as the fictional name of a theme park created to dramatize the “rebellious” energy of the MOTHER brand. The true indicator of origin was the gothic-script MOTHER mark displayed prominently on cans of energy drink throughout the advertisement. The suffix “land” did not function to distinguish goods. Instead, it simply extended the fantasy of a branded world.
This reasoning reflects well-settled principles from cases such as E & J Gallo Winery v Lion Nathan and Anheuser-Busch v Budejovicky Budvar. A sign must function as a badge of origin in its context. Slogans, taglines, or fanciful constructs may be protected if they serve that role, but in this instance, MOTHERLAND was found to be nothing more than a creative backdrop.
The consequence was that MOTHERLAND was removed for non-use. EB’s attempt to preserve registration under the Court’s discretionary power in section 101(3) also failed. The Court saw no compelling reason to maintain registration for goods like waters, juices, or sports drinks once non-use had been established.
The “MOTHERSKY” Opposition
The more contentious part of the case arose from EB’s opposition to Cantarella’s MOTHERSKY application. The primary judge had dismissed EB’s arguments, holding that coffee and non-alcoholic beverages such as energy drinks were not “similar goods” under section 44(1), and that MOTHERSKY was not deceptively similar to MOTHER.
The Full Court disagreed on both counts.
Similar Goods under Section 44
The main part of the analysis was the statutory test in section 14(1), which defines goods as similar if they are the same or of the same description. The primary judge acknowledged that, in the abstract, both coffee and energy drinks are “non-alcoholic beverages,” but he then emphasized their differences in taste, function, and presentation.
The Full Court took a broader and more commercial view. It stressed that the classification of goods under the Nice classification system is merely an administrative convenience and not decisive of scope. What matters is how the goods would be understood in trade and commerce.
At paragraph 132, the Court explained that while coffee beverages fall under Class 30 and non-alcoholic beverages under Class 32, this division does not dictate whether they are similar. The real question is whether, from a commercial perspective, coffee beverages are encompassed by a claim to non-alcoholic beverages. The Court answered in the affirmative. Consumers encounter both energy drinks and coffee as caffeinated stimulants sold through overlapping channels such as supermarkets, convenience stores, and cafes. From a business perspective, they sit within the same broad market of non-alcoholic, caffeinated drinks.
This conclusion resonates with earlier authorities such as Re Australian Wine Importers Ltd (1889) and Reckitt & Coleman v Boden, which caution against treating classes as determinative. It also reflects contemporary market realities, where brand owners often diversify across beverage categories.
Deceptive Similarity
The second issue was whether MOTHERSKY was deceptively similar to MOTHER. The primary judge thought not, reasoning that MOTHERSKY was a novel coined word with emphasis on “sky,” not “mother.” The Full Court, however, emphasized the doctrine of imperfect recollection. Consumers do not hold brands in precise memory. What matters is the impression conveyed.
The Court held that the shared dominant element “mother” created a real risk of confusion, particularly given EB’s strong reputation in MOTHER energy drinks. Consumers encountering MOTHERSKY coffee might well wonder whether it was a brand extension or affiliated product. The possibility of confusion as to source, rather than product type, was enough to trigger section 44.
The Court also drew support from section 60, which allows opposition based on reputation. EB’s extensive reputation in MOTHER for energy drinks meant that the risk of association was not fanciful. Even though EB’s reputation was described as “deep but narrow,” confined to energy drinks, that was sufficient to guard against marks that adopted its distinctive root.
Accordingly, the Full Court granted leave to appeal in the MOTHERSKY matter and allowed EB’s opposition, overturning the primary judge’s findings.
Key Lessons for Brand Owners
The decision carries several practical lessons for trade mark strategy.
Firstly, non-use provisions are unforgiving. Brand owners cannot rely on historic campaigns or legacy online content to preserve registrations. Genuine trade mark use requires active, current use in the course of trade. Simply leaving an old advertisement online will not suffice, even if it remains technically accessible to consumers.
Secondly, the case illustrates the importance of considering trade mark function in context. Creative constructs like MOTHERLAND, while memorable, may not operate as trade marks if they do not serve as badges of origin. Businesses should be cautious when registering campaign slogans or fanciful concepts and ensure they are actually used to denote origin, not merely atmosphere.
Thirdly, the Court’s reasoning on similar goods is especially significant. It confirms that the Nice classification is not a barrier to arguments about similarity. Coffee in Class 30 and energy drinks in Class 32 can indeed be similar goods if, commercially, they overlap in consumer perception, use, and trade channels. This approach provides flexibility to brand owners opposing marks across different classes and highlights the need to think commercially rather than administratively.
Finally, the judgment underscores the enduring influence of reputation in trade mark disputes. Even when a brand’s reputation is narrowly tied to a single product category, its strength can still create a zone of protection against encroaching marks. The MOTHER brand’s association with high-caffeine beverages meant that consumers could plausibly link MOTHERSKY coffee to the same source.
Conclusion
Thus, the outcome of the case, Energy Beverages LLC v Cantarella Bros Pty Ltd, reflects the delicate balance under trade mark law, i.e. rewarding genuine commercial use while preventing unfair encroachment on established reputations. EB lost its MOTHERLAND registration because it failed to demonstrate active use, but it succeeded in blocking MOTHERSKY by showing that coffee and energy drinks are similar goods and that “mother” is the dominant, memorable element in its branding.
For trade mark owners, the case is both cautionary and encouraging. It cautions against complacency in maintaining registration as non-use is a potent ground for removal. At the same time, it encourages proactive opposition, even across class boundaries, where commercial realities support the chances of finding of similarity. That said, it reinforces the principle that trade mark law is about business and consumer perception, not bureaucratic labels.
Contact us to learn more about how LexGeneris can assist you with all your intellectual property needs. You can also schedule a no-cost consultation with our team of expert IP Attorneys Australia, IP Attorneys India, and IP Attorneys New Zealand.
