On 24 July 2009, the Delegate of the Registrar of Trade Marks handed down: The Coca-Cola Company v Matthew Shea [2009] ATMO 49 (30 June 2009)
The Coca-Cola Company owns a number of registrations for MOTHER (and a device), a fairly well known brand of energy/soft drink. Coca-Cola objected to the registration of NAUGHTY MOTHER in respect of goods that were virtually identical to those in respect of which Coca-Cola's are registered.
The basis of the objection was that the marks were deceptively similar. Coca-Cola emphasised that deceptive similarity would be found where there was a definite likelihood that a substantial number of persons would assume that the two sets of goods sold under the marks emanated from the same trade source.
An attempt should be made to
estimate the effect or impression produced on the mind of potential
customers by the mark or device against which action is taken.
Coca-Cola submitted that buyers wanting its product would ask for a
MOTHER. Also, Coca-Cola said that the word MOTHER is the essential
feature of its mark and is both highly memorable and distinctive,
particularly in the context of the goods. It also submitted that the
word MOTHER used with the graphics was a "shocking and unexpected"
contradiction. The same effect resulted from the use of the word
"NAUGHTY" with "MOTHER", thereby enhancing the deceptive similarity.
The Delegate accepted these submissions and refused to register
NAUGHTY MOTHER.
I see from the register that Matthew Shea has opposed Coca-Cola's application for registration of MOTHER. I will keep an eye out for that decision.