Pink Energy Beverages Pty Ltd v Mr Pink Collections LLC  119 IPR 476
When trademarks are registered, often both words and a visual logo are included.
The Registrar of Trade Marks recently held that an application by Mr Pink Collections LLC for extension of trademark protection was unsuccessful. In doing so, they made some relevant comments on composite trademarks.
The application involved Mr Pink’s ginseng drink that was considered an alternative to mainstream energy drinks, and Pink Energy’s energy drink. Both sold cans of the same size, in similar colours, and with the word ‘pink’ in the same orientation and similar prominence on the packaging.
Pink Energy made opposition under s 44 Trade Marks Act 1995, alleging that when the entirety of the two trademarks were considered, Mr Pink’s trademark was deceptively similar to Pink Energy’s.
Here is a photograph of both products.
The Hearing Officer noted that Pink Energy’s trademarks had been accepted and registered on the basis that it does or will distinguish the goods, which means that its elements cannot be discounted. Therefore, the Hearing Officer considered that there must be a prior right in the expression ‘Pink Diet Energy Drink’ as a whole. In dealing with this, the Hearing Officer (at ) referenced an exception provided in Mount Everest Mineral Water Ltd  ATMO 65 where it was said (at -, in that case):
“But what of situations such as that before me where both sets of trade marks under consideration share elements which are of obviously low adaptive strength along with other matter that may or may not be of great assistance in distinguishing the trade marks from one another?
Registration of composite trade marks gives rights in the trade mark as a whole, rather than in its individual elements… The situation before me would naturally be considerably different if the cited trademarks had been accepted under the provisions of either subsection 41(5) or subsection 41(6): such acceptance would be viewed as having implied a prior right in the shared element.”
In Mount Everest Mineral Water, this meant that another logo using the shared, non-distinctive element of a mountain graphic was not deceptively similar as there were distinguishing features.
The Hearing Officer therefore found (at ) that the word “PINK” must be given due weight in the trademarks when also taking into account its visual prominence in both. It was also of relevance that energy drinks are low priced goods purchased after “a few seconds of decision making.”
To read the full decision, follow this link – http://www.austlii.edu.au/au/cases/cth/ATMO/2016/20.html
- JT International SA v Commonwealth of Australia; British American Tobacco Australasia Ltd v The Commonwealth  HCA 43; (2012) 291 ALR 669, at 738, 740.
- REA Group Ltd v Real Estate 1 Ltd (2013) 217 FCR 327, at -, .
- Australian Homestay Network Pty Ltd v Homestay Network Pty Ltd (2015) 112 IPR 76, at -.
Legislation and catchwords
- Composite trademarks
- Deceptively similar
- s 44 of the Trade Marks Act 1955 (Cth)