6 January, 2020
Fonterra Co-Operative Group Limited v Vitasoy International Singapore Pte Ltd [2049] ATMO 137 (17 September 2019).
What you need to know
- Fonterra unsuccessfully opposed the registration of "GROWING MILK SINCE 1940" (Australian Trade Mark Application Number 1875463 in classes 29, 30 and 32) by Vitasoy.
- Despite the use of the word "milk" being heavily regulated in Australia, it is acceptable to refer to plant based milks in a trade mark as "milk" if, when looking at the mark as a whole, it is clear that the trade mark is not referring to dairy milk.
- Consumers are unlikely to be confused or deceived that "GROWING MILK SINCE 1940" refers to dairy milk as you do not grow dairy milk.
What you need to do
- When seeking to register a trade mark containing the word "milk" for a plant based milk product, ensure that the trade mark, when viewed as a whole, is clearly not referring to dairy milk.
- In addition, to avoid contravening the Food Standards Code in relation to the sale of plant based milk products, ensure the product is labelled or sold as "[plant] milk" rather than simply "milk" which has a specific meaning in the Code.
What is special about "milk"?
Milk and other dairy products are regulated by the Australia and New Zealand Food Standards Code (Code), which provides that food that is sold as "milk" must be milk and defines "milk" as relating to the mammary secretion of milking animals. A similar definition is contained in the Dairy Produce Act 1986 (Cth) and in standards set by the Codex Alimentarius Commission (the international food standards setting body).
Vitasoy applied for the mark "GROWING MILK SINCE 1940". This mark appears to be part of a marketing campaign celebrating Vitasoy's long history of turning plants into milk. Relevantly, Vitasoy sells a number of plant based milk products, including "rice milk", "soy milk", "almond milk", "coconut milk" and "oat milk".
Fonterra opposed the trade mark out of desire to maintain the meaning and integrity of the word "milk". Fonterra stated that milk is a unique, naturally secreted, raw material with an established reputation for quality, nutrition and natural goodness. Conversely, soy drinks are the result of a complex manufacturing process involving the extraction of components from the soya bean, with added components to create a cloudy "milk-like" appearance. While nutrients are often added during manufacturing processes, plant based milks and dairy milk may have quite different nutritional profiles.
Fonterra also claimed that the line between dairy milk and plant based products should not be blurred. For some consumers, who need or want to avoid either dairy milk or plant based products, it is quite important that they are aware which product they are consuming. This might be the case where a customer has an allergy or intolerance, a vegan based diet, or for young children as plant based products are not a suitable alternative to milk for children under the age of 5.
Consider the mark as a whole
Fonterra's primary ground of opposition to "GROWING MILK SINCE 1940" was on the basis of section 43 of the Trade Marks Act 1995 (Cth). It submitted that the prominent use of the word "milk" in the mark would cause some consumers to wonder whether the goods contain dairy milk and could mislead consumers about the nature of the goods. Under section 43, a trade mark application must be rejected if the mark has an inherent connotation such that use of the mark in relation to the claimed goods and services would likely deceive or cause confusion.
The Hearing Officer considered that consumers were likely to be aware of the various types of plant based beverages that are often described as "milk". Vitasoy itself has been selling plant based milks in Australia and describing them as "milks" (with a descriptor) since 1977, and other traders have similar practices. Further, there are a range of meanings of "milk" in dictionaries which extend to plant based products.
"GROWING MILK SINCE 1940" must be considered as a whole. While the mark does not contain a descriptor such as "rice", "almond" or "soy", consumers are likely aware that dairy milk is not grown because it is milked from a cow (which is also not grown). Therefore, it is unlikely that a consumer, viewing the mark as a whole, would be confused or deceived into wondering if the mark is referring to dairy milk. The addition of the word "growing" was sufficient to clarify and remove any connotation that the milk referred to was dairy milk.
Look beyond the trade mark
However, the trade mark analysis was not the end of the matter. Fonterra argued that use of the mark would be contrary to law due to the requirements of the Code in respect of "milk" and because use of the mark would be misleading and deceptive.
The Code states "if a food name is used in connection with a food, the sale is taken to be a sale of the food unless the context makes it clear that it is not the intention" (emphasis added). Therefore, what is relevant in this instance is how the food is sold.
If Vitasoy sold its products as "milk" without an additional descriptor such as "soy" or "almond", that use and the use of the "GROWING MILK SINCE 1940" mark could be in breach of the Code and also misleading and deceptive. However, the available evidence suggested that Vitasoy's products were labelled as "[plant] milk" which did not breach the Code and did not connote that the products were dairy milk. Accordingly, the delegate found that the opposition was not established.
For further information, please contact:
Philippa Anstey, Ashurst
philippa.anstey@ashurst.com
