[2009] ATMO 49

The Coca-Cola Company (Coca-Cola) opposed Matthew Shea’s application for NAUGHTY MOTHER in class 32 (non-alcoholic drinks). Coca-Cola claimed that the NAUGHTY MOTHER trade mark was deceptively similar under section 44 of the Trade Marks Act 1995 (Cth) and section 52 of the Trade Practices Act 1974 (Cth) to its three MOTHER device mark registrations for similar goods in class 32.

The opposition was upheld by the hearing officer. The marks were found to be deceptively similar for the following two reasons:

1.MOTHER as the dominant feature

‘MOTHER’ was the dominant element in both the Applicant’s mark and in Coca-Cola’s prior registrations. The hearing officer accepted Coca-Cola’s submission that a customer seeking a Coca-Cola MOTHER drink would likely request a ‘MOTHER’. This was partly because MOTHER was the only word element in the prior registrations, but also because MOTHER is a highly distinctive and memorable word when applied to beverages.

2.Unexpected contradiction

Part of the distinctiveness of the Coca-Cola marks arose from the unusual juxtaposition of the word MOTHER (with all its sweet feminine connotations) with rather menacing imagery such as a Venus fly trap, thorns and monsters. Coca-Cola alleged (and the hearing officer accepted) that the applicant was attempting to introduce a similarly unexpected contradiction by pairing ‘MOTHER’ with ‘NAUGHTY’. The hearing officer accepted Coca-Cola’s concern that consumers might view NAUGHTY MOTHER as an updated and ‘more exciting’ version of Coca-Cola’s original drink (at paragraph 17).

The result is not particularly surprising. However, the case is useful because it demonstrates that devices containing unusual text/imagery juxtapositions (such as Coca-Cola’s devices) can be protected against marks containing unusual text/text juxtapositions (such as NAUGHTY MOTHER).