The a2 Milk Company Limited v LD&D Australia Pty Ltd

• Jurisdiction: Australia Federal only
• Judgment Date: 03 December 2021
• Neutral Citation: [2021] FCA 1515
• Court: Federal Court
• Date: 03 December 2021

FEDERAL COURT OF AUSTRALIA

The a2 Milk Company Limited v LD&D Australia Pty Ltd [2021] FCA 1515

File numbers:	NSD 1012 of 2019 NSD 1282 of 2019
Judgment of:	BROMWICH J
Date of judgment:	3 December 2021
Catchwords:	TRADE MARKS – appeals under s 56 of the Trade Marks Act 1995 (Cth) from decisions of delegates of Registrar of Trade Marks to refuse applications to register in respect of words “a2 Milk” and “TRUE A2” which were each opposed by the respondent – where respondent has withdrawn opposition to registration – where parties sought by consent orders requiring that the trade mark applications the subjects of the appeals proceed to registration – where Registrar was unable to issue a letter indicating no opposition to her delegates’ decisions being set aside – held: appropriate to order that each trade mark application proceed to registration.
Legislation:	Trade Marks Act 1995 (Cth) ss 33, 41, 56
Cases cited:	Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; 345 ALR 205; 124 IPR 264 Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93; 261 FCR 301 British Sugar Plc v James Robertson & Sons Ltd [1996] RPC 281 Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA48; 254 CLR 337 Chevron USA Inc v National Resources Defense Council Inc, 467 US 837 (1984) Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 Corporation of the City of Enfield v Development Assessment Commission [2000] HCA 5; 199 CLR 135 Mars Australia Pty Ltd v Société des Produits Nestlé SA[2010] FCA 639; 86 IPR 581 Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823 Registrar of Trade Marks v Muller (1980) 144 CLR 37 Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020; 93 FCR 365 Société des Produits Nestlé SA v Aldi Stores (A Limited Partnership) [2010] FCA 218 Tohi v Minister for Immigration, Citizenship, Migrant Services and Multicultural Affairs[2021] FCAFC 125
Division:	General Division
Registry:	New South Wales
National Practice Area:	Intellectual Property
Sub-area	Trade Marks
Number of paragraphs:	35
Date of hearing:	27 July 2021
Counsel for the Applicant:	R Cobden SC, L Thomas
Solicitor for the Applicant:	Clayton Utz
Counsel for the Respondent:	The respondent was excused from appearing
Solicitor for the Respondent:	Baker McKenzie

ORDERS

		NSD 1012 of 2019 NSD 1282 of 2019
BETWEEN:	THE A2 MILK COMPANY LIMITED Applicant
AND:	LD&D AUSTRALIA PTY LTD ACN 083 019 390 First Respondent

order made by:	BROMWICH J
DATE OF ORDER:	3 DECEMBER 2021

THE COURT ORDERS THAT:

1. The appeals from the decisions of the delegates of the Registrar of Trade Marks given on 22 July 2019 in respect of trade mark application no 1708342 and on 3 June 2019 in respect of trade mark application no 1751238 be allowed.

2. The decisions be set aside.

3. The trade mark applications the subject of the appeals proceed to registration.

4.No orders be made as to costs.

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.

REASONS FOR JUDGMENT

BROMWICH J:

1 The milk that cows produce contains a number of different proteins, amounting to some 3.3% by weight of the milk. These proceedings concern a subset of those proteins that amount to less than 1% of cows’ milk by weight. In particular:

(a) most of the proteins in cows’ milk are known as caseins, divided in to several families known as alpha-, beta- and kappa-caseins, amongst others;

(b) bovine beta-caseins comprise less than 1% of cows’ milk by weight;

(c) there are at least 12 known variants of bovine beta-casein;

(d) as relevant to these applications and appeals, in the scientific literature one such bovine beta-casein variant is known as A¹, and another such variant is known as A², which can also be rendered as A1 and A2;

(e) a naming convention of using just A¹ or A1, is not scientifically unique to bovine beta-casein, such that scientists would not use a naming convention such as “A1” or “A1 protein” on its own; there are also A variants of kappa-casein.

2 A2 protein is apparently the original beta-casein protein in cows’ milk, but additional proteins have emerged over time as a result of genetic mutation. The applicant’s milk and milk products contain A2 proteins, in common with nearly all other cows’ milk. What distinguishes the applicant’s milk and milk products is that they do not contain A1 proteins. A1 proteins are said to produce digestive problems for some consumers, and milk without A1 proteins are accordingly preferred by some consumers. Thus, curiously, the use of A2 is intended to highlight or signify the absence of A1 protein, the presence of A2 protein not being a distinguishing feature. There is a significant marketing advantage in the applicant having a trade mark monopoly in the use of A2 as a brand name.

3 The applicant has no objection on trade mark grounds to the use of “A2” by third parties, where it is used descriptively to refer to that protein. However, the applicant objects to the use of “A2” or “a2” as a brand, or part of a brand, for other milk and milk products of other producers. It is protection against that use which was sought to be achieved by the two trade mark applications which are the subject of these two related proceedings.

4 The applicant brings two appeals under s 56 of the Trade Marks Act 1995 (Cth) from decisions of two separate delegates of the Registrar of Trade Marks. The delegates had upheld the respondent’s opposition to separate trade mark applications for the words “a2 Milk” and “TRUE A2” under s 41 of the Trade Marks Act.

5 The appeals have resolved inter partes. The respondent, a trade competitor of the applicant in relation to milk and milk products, no longer wishes to take any part in either proceeding and has consented to orders being made allowing the two appeals, setting aside the delegates’ decisions, ordering that each trade mark application proceed to registration, and making no order as to costs. A similar situation occurred in Société des Produits Nestlé SA v Aldi Stores (A Limited Partnership) [2010] FCA 218 per Nicholas J (Nestlé v Aldi), which did not proceed to a hearing, and in Mars Australia Pty Ltd v Société des Produits Nestlé SA[2010] FCA 639; 86 IPR 581 per Bennett J (Mars v Nestlé), which resolved during the course of a contested trial after numerous hearing days.

6 In both Nestlé v Aldi and Mars v Nestlé, the Registrar provided a letter indicating no opposition to the decision of the delegate being set aside, which would lead to registration due to there being no continuing opposition to that taking place. That letter was given to the trial judge in each case, and was given a degree of weight in making orders that each application proceed to registration. The applicant sought a similar letter in this case, expressly relying upon what had happened in Nestlé v Aldi and Mars v Nestlé. However in this case, a Deputy Registrar concluded that the Registrar was “unable to issue a letter indicating that she has no objection to the decisions of her Delegates being set aside”, having:

(a) referred to the Registrar’s position arising from each delegate’s decision that registration be refused under s 41 on the basis of evidence and submissions then before the Registrar;

(b) taken into account the public interest in dealing with each application expeditiously rather than pursuing them through this Court;

(c) noted that the ground of opposition was an...