O/273/21 448Kb

O/273/21

TRADE MARKS ACT 1994

IN THE MATTER OF TRADE MARK APPLICATION NO. 3390996 BY SOCIÉTÉ DES PRODUITS NESTLÉ S.A.

TO REGISTER:

AS A TRADE MARK IN CLASSES 5 & 29

AND

IN THE MATTER OF THE OPPOSITION THERETO UNDER NO. 417103 BY THE a2 MILK COMPANY LIMITED

BACKGROUND AND PLEADINGS

1. Société des Produits Nestlé SA (“the applicant”) applied to register the mark shown on the cover page of this decision in the United Kingdom on 10 April 2019. The application was accepted and published on 26 April 2019 in respect of the following goods:

Class 5 Dietetic foodstuffs, beverages and substances for medical and clinical use; food and food substances for babies; food preparations for infants; lacteal flour for babies; powdered milk for babies; foodstuffs and food substances for medical use for children and patients; foodstuffs and food substances for medical use for nursing mothers; nutritional supplements for medical use for pregnant women and breastfeeding mothers; nutritional supplements; dietetic supplements for medical use; nutritional and dietetic supplements for medical use; vitamin preparations, mineral-based preparations; dietary fibers; vitamins; vitamin preparations and substances; nutritional and food supplements.

Class 29 Milk and dairy products; powdered milk; milk-based beverages and preparations; milk substitutes; milk beverages, milk predominating; milk-based beverages containing cereals and/or chocolate; yogurts; soy milk.

2. On 24 July 2019, the application was opposed by The a2 Milk Company Limited (“the opponent”). The opposition is based on section 5(2)(b) of the Trade Marks Act 1994 (“the Act”) and concerns all the goods in the application. The opponent relies on the following marks:

Page 2 of 34

Mark Goods relied upon EUTM No. 0144063261 Class 5 Food for infants; powdered milk for babies; dietetic beverages adapted for medical use.

Class 29 Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating. Application date: 22 July 2015 Registration date: 12 September 2016

EUTM No. 017471641 Class 5 Food for infants; milk and powdered milk for infants; a2 Only dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional

supplements; protein dietary supplements; Priority date: 20 October 2017 powdered nutritional supplement drink mixes; Application date: 13 November dietary supplemental drinks; protein powder; protein 2017 powder for use as a food additive. Registration date: 23 March 2018 Class 29 Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating; milk-based protein drinks; whey; dry whey.

Class 30 Ice cream; frozen yoghurt; edible ices; desserts, namely, bakery desserts, dessert puddings, and frozen dessert; pastries; confectionery.

1 Although the UK has left the EU and the transition period has now expired, EUTMs and International Marks which have designated the EU for protection are still relevant in these proceedings given the impact of the transitional provisions of The Trade Marks (Amendment etc.) (EU Exit) Regulations 2019, SI 2019 No. 269, Schedule 5. Further information is provided in Tribunal Practice Notice 2/2020.

Page 3 of 34

Mark Goods relied upon EUTM No. 017819608 Class 5 Food for infants; milk and powdered milk for infants; a2 True dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional

supplements; powdered nutritional supplement Priority date: 18 January 2018 drink mixes; dietary supplemental drinks; protein Application date: 16 February dietary supplements; protein powder; protein 2018 powder for use as a food additive. Registration date: 16 June 2018 Class 29 Milk powder; milk; butter; cheese; cream; yoghurt; milk beverages, milk predominating; milk-based protein drinks; whey; dry whey. UKTM No. 3159096 Class 5 Food for infants; milk and powdered milk for infants; DO YOU a2? dietetic food and beverages.

Class 29 Application date: 12 April 2016 Milk powder; milk; butter; cheese; cream; yoghurt; Registration date: 8 July 2016 milk beverages, milk predominating.

3. The opponent claims that the marks and goods are similar, and so there is a likelihood of confusion on the part of the public.

4. The applicant filed a defence and counterstatement denying that the marks are similar and that the goods are identical or similar, apart from Food and food substances for babies; food preparations for infants; powdered milk for babies and nutritional supplements in Class 5 and milk; powdered milk; milk beverages, milk predominating and yoghurts in Class 29.

5. The matter came to be heard by me on 28 January 2021 by video conference. The opponent was represented by Guy Tritton of Counsel, instructed by HGF Limited. The applicant was represented by Angela Fox and Mark Webster of Maucher Jenkins.

Page 4 of 34

EVIDENCE AND FACTUAL BACKGROUND

6. Both parties filed large volumes of evidence and I shall not summarise it in detail here. Where relevant, I shall return to it later in my decision. I confirm that I have read and (where provided on a USB drive) viewed all the evidence.

7. At this point I note that the distinctiveness of the earlier marks was the central issue in this case. Both parties agreed on the following facts. Most cows produce milk containing different types of proteins, around a third of which are beta-casein proteins. These can be divided into A1-type and A2-type proteins.2 Research has shown that some people experience difficulties in digesting the A1-type proteins. Cows can be genetically tested to identify those that produce milk that is naturally A1-type protein- free.

8. The opponent’s evidence in chief came from Ms Susan Massasso, Global Chief Marketing Officer of The a2 Milk Company Limited (“a2MC”). The purpose of her evidence was to show use of the earlier marks, notably EUTM No. 014406326, and the activity undertaken to promote them. There was also a witness statement from Mr Jonathan Thurgood, Trade Mark Attorney, Litigator and Shareholder Partner at HGF Limited, the opponent’s representatives. His evidence went to the distinctiveness of the earlier marks. Both witness statements are dated 23 December 2019.

9. The applicant’s evidence came from Isabelle de Blic-Hamon, Senior Legal Counsel, Société des Produits Nestlé SA. It is dated 2 March 2020. The thrust of Ms de Blic- Hamon’s evidence is that, in the context of the goods covered by the earlier marks, “a2” is a purely descriptive term. Among her exhibits are scientific articles, factsheets, production information sourced from a Mintel report and producers’ websites, and decisions from other intellectual property offices.

10. The opponent’s evidence in reply came from Dr Andrew John Clarke, Scientific Adviser at a2MC, and Ms Massasso. Dr Clarke’s evidence aimed to show that Ms Blic- Hamon’s characterisation of “A2 Milk” as a descriptive term was scientifically

2 Paragraph 2.

Page 5 of 34 inaccurate, while Ms Massasso gave comments on the applicant’s evidence. Their witness statements were dated 29 September 2020. The opponent also adduced an informal survey intended to gauge awareness among the public of the name “A2” in relation to milk or milk products.

11. The applicant wrote to the Registry on 14 October 2020. It submitted that the opponent had not sought permission to carry out a survey which was, in its view, in any case “gravely flawed”, or to file expert evidence, which is how the applicant characterised a large part of Dr Clarke’s evidence. It requested that both the survey and the majority of Dr Clarke’s evidence be deemed inadmissible.

12. The Registry wrote to the opponent on 9 November 2020, asking it to clarify on what basis the evidence in reply was presented. The opponent responded on 23 November 2020. It denied that Dr Clarke’s evidence constituted expert evidence as it is typically understood; rather, it was evidence provided by an employee of the opponent’s business who had a scientific background. It also characterised the surveys as informal evidence. All the evidence filed by the opponent was admitted.

13. At the hearing, Ms Fox maintained that this evidence would not help the tribunal come to a decision in this case. I shall return to this point later in my decision.

DECISION

14. Section 5(2) of the Act is as follows:

“A trade mark shall not be registered if because –

(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or

(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected,

Page 6 of 34

there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.”

15. An “earlier trade mark” is defined in section 6(1) of the Act as:

“(a) a registered trade mark, international trade mark (UK), a European Union trade mark or international trade mark (EC) which has a date of application for registration earlier than that of the trade mark in question, taking account (where appropriate) of the priorities claimed in respect of the trade marks,

(b) a European Union trade mark or international trade mark (EC) which has a valid claim to seniority from an earlier registered trade mark or international trade mark (UK) even where the earlier trade mark has been surrendered or its registration has expired,

(ba) a registered trade mark or international trade mark (UK) which –

(i) has been converted from a European Union trade mark or international trade mark (EC) which itself had a valid claim to seniority within paragraph (b) from an earlier trade mark, and (ii) accordingly has the same claim to seniority, or

(c) a trade mark which, at the date of application for registration of the trade mark in question or (where appropriate) of the priority claimed in respect of the application, was entitled to protection under the Paris Convention or the WTO agreement as a well known trade mark.”

16. The registrations upon which the opponent relies qualify as earlier trade marks under the above provision. As the marks were registered within the five years before the date on which the applicant’s mark was published, they are not subject to proof of use and the opponent is therefore entitled to rely on all the goods for which the marks stand registered.

Page 7 of 34

17. Although the UK has left the EU, section 6(3)(a) of the European (Withdrawal) Act 2018 requires tribunals to apply EU-derived national law in accordance with EU law as it stood at the end of the transition period. The provisions of the Trade Marks Act relied on in these proceedings are derived from an EU Directive. This is why this decision continues to make reference to the trade mark case law of EU courts.

18. In considering the opposition, I am guided by the following principles, gleaned from the decisions of the Court of Justice of the European Union (CJEU) in SABEL BV v Puma AG (Case C-251/95), Canon Kabushiki Kaisha v Metro-Goldwyn-Mayer Inc (Case C-39/97), Lloyd Schuhfabrik Meyer & Co GmbH v Klijsen Handel BV (Case C-342/97), Marca Mode CV v Adidas AG & Adidas Benelux BV (Case C- 425/98), Matratzen Concord GmbH v Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM) (Case C-3/03), Medion AG v Thomson Multimedia Sales Germany & Austria GmbH (Case C-120/04), Shaker di L. Laudato & C. Sas v OHIM (Case C-334/05 P) and Bimbo SA v OHIM (Case C-519/12 P):

a) the likelihood of confusion must be appreciated globally, taking account of all relevant factors;

b) the matter must be judged through the eyes of the average consumer of the goods or services in question. The average consumer is deemed to be reasonably well informed and reasonably circumspect and observant, but someone who rarely has the chance to make direct comparisons between marks and must instead rely upon the imperfect picture of them they have kept in their mind, and whose attention varies according to the category of goods or services in question;

c) the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details;

d) the visual, aural and conceptual similarities of the marks must normally be assessed by reference to the overall impressions created by the marks bearing in mind their distinctive and dominant components, but it is only when all other

Page 8 of 34

components of a complex mark are negligible that it is permissible to make the comparison solely on the basis of the dominant elements;

e) nevertheless, the overall impression conveyed to the public by a composite trade mark may be dominated by one or more of its components;

f) however, it is also possible that in a particular case an element corresponding to an earlier trade mark may retain an independent distinctive role in a composite mark, without necessarily constituting a dominant element of that mark;

g) a lesser degree of similarity between the goods or services may be offset by a greater degree of similarity between the marks and vice versa;

h) there is a greater likelihood of confusion where the earlier mark has a highly distinctive character, either per se or because of the use that has been made of it;

i) mere association, in the strict sense that the later mark brings the earlier mark to mind, is not sufficient;

j) the reputation of a mark does not give grounds for presuming a likelihood of confusion simply because of a likelihood of association in the strict sense; and

k) if the association between the marks creates a risk that the public will wrongly believe that the respective goods or services come from the same or economically-linked undertakings, there is a likelihood of confusion.

My approach

19. Mr Tritton for the opponent submitted that its best case lay with the first earlier mark, EUTM No. 014406326. I shall therefore proceed on the basis of this mark alone and will return to consider the remaining marks if that proves necessary. I shall refer to this mark as the “a2 Milk mark”.

Page 9 of 34

Comparison of goods

20. It is settled case law that I must make my comparison of the goods and services on the basis of all relevant factors. These include the nature of the goods and services, their purpose, their users and method of use, the trade channels through which they reach the market, and whether they are in competition with each other or are complementary: see Canon, paragraph 23, and British Sugar Plc v James Robertson & Sons Limited (TREAT Trade Mark) [1996] RPC 281 at [296]. Goods and services are complementary when

“… there is a close connection between them in the sense that one is indispensable or important for the use of the other in such a way that customers may think that the responsibility for those goods lies with the same undertaking.”3

21. The goods to be compared are shown in the table below:

Earlier goods Contested goods/services Class 5 Class 5 Food for infants; powdered milk for Dietetic foodstuffs, beverages and babies; dietetic beverages adapted for substances for medical and clinical use; medical use. food and food substances for babies; food preparations for infants; lacteal flour Class 29 for babies; powdered milk for babies; Milk powder; milk; butter; cheese; foodstuffs and food substances for yoghurt; milk beverages, milk medical use for children and patients; predominating. foodstuffs and food substances for medical use for nursing mothers; nutritional supplements for medical use; nutritional and dietetic supplements for medical use; vitamin preparations, mineral-based preparations; dietary

3 Boston Scientific Ltd v OHIM, Case T-325/06, paragraph 82.

Page 10 of 34

Earlier goods Contested goods/services fibers; vitamins; vitamin preparations and substances; nutritional and food supplements.

Class 5

22. The applicant’s Dietetic beverages … for medical and clinical use, Food and food substances for babies, Food preparations for infants, Powdered milk for babies are identical to goods covered by the a2 Milk mark.

23. Goods are also considered to be identical when the contested goods are included in a broader category covered by the earlier mark, or vice versa: see Gérard Meric v OHIM, Case T-133/05, paragraph 29. Under this principle, Dietetic substances … for medical and clinical use are identical to the opponent’s Dietetic beverages adapted for medical use.

24. Dietetic foodstuffs … for medical and clinical use and Foodstuffs and food substances for medical use for children and patients are foods that are intended to provide for specific nutritional requirements for example in managing medical conditions. They are, in my view, highly similar to the opponent’s Dietetic beverages adapted for medical use. While their physical nature differs, their purpose, method of use and users are the same and they are likely to share trade channels. They may also be in competition with each other as the same nutritional benefit could be delivered by a food or a beverage.

Page 11 of 34

25. Lacteal flour for infants is included in the opponent’s broader category of Food for infants and so I find these goods to be identical per Meric.

26. Foodstuffs and food substances for medical use in nursing mothers and Nutritional supplements for medical use for pregnant women and breastfeeding mothers are intended to provide an optimal balance of nutrition for a baby, before it is born and while it is being breastfed. The purpose of these goods is therefore similar to that of the opponent’s Food for infants and Powdered milk for babies. The method of use is different as the opponent’s goods are directly consumed by the baby, while the contested goods are indirectly consumed. There is likely to be some similarity in physical nature of the goods and shared trade channels. The goods are not complementary. Overall, I find that they are similar to a medium degree.

27. I shall consider the applicant’s Nutritional supplements, Nutritional and food supplements, Vitamin preparations, Mineral-based preparations, Dietary fibers, and Vitamin preparations and substances as a group. This is permissible in the circumstances outlined by Mr Geoffrey Hobbs QC, sitting as the Appointed Person, in SEPARODE Trade Mark, BL O-399-10:

“The determination must be made with reference to each of the different species of goods listed in the opposed application for registration; if and to the extent that the list includes goods which are sufficiently comparable to be assessable for registration in essentially the same way for essentially the same reasons, the decision taker may address them collectively in his or her decision.”4

28. The applicant’s goods are used to supplement the consumer’s diet not only for specific medical reasons, but to improve the user’s general health. They may come in a variety of forms: tablets, powders, liquids, and so on. There is some overlap in users and physical nature with the opponent’s Dietetic beverages adapted for medical use. They will also share some trade channels. However, the method of use is likely to be different; nor would the applicant’s goods offer the refreshment that a beverage also

4 Paragraph 5.

Page 12 of 34 provides. There is likely to be some competition, as the consumer may drink a dietetic beverage or take one of the supplements with a glass of water. Taking all these factors into account, I consider that the applicant’s goods are similar to a low degree to Dietetic beverages adapted for medical use.

29. In the case of Dietetic supplements for medical use and Nutritional and dietetic supplements for medical use, I find a slightly closer degree of similarity. The purpose of these goods is more closely aligned to that of the opponent’s Dietetic beverages adapted for medical use, although my analysis of the remaining factors is the same. I find there to be similarity between these goods to a medium degree.

Class 29

30. Milk, Powdered milk and Milk beverages, milk predominating, are identical to goods covered by the specification of the a2 Milk mark.

31. The applicant’s Dairy products is a broader category that includes several of the Class 29 goods in the opponent’s specification, for instance Milk, Butter and Cheese. I find them to be identical under the Meric principle.

32. Milk-based beverages and preparations is also a broader category that would include the opponent’s Milk beverages, milk predominating. I also find them to be Meric-identical.

33. Milk substitutes and Soy milk share the same purpose as the opponent’s Milk. They are consumed as a beverage, added to other beverages such as coffee or tea, or used in cooking. Their physical nature, method of use and users will be the same and they will also share the same trade channels. In a supermarket, they are stocked in the same chiller cabinets or aisles. They are clearly in competition. I find Milk substitutes and Soy milk to be highly similar to Milk.

34. I shall compare the applicant’s Milk-based beverages containing cereals and/or chocolate to the opponent’s Milk beverages, milk predominating. The users, method of use and trade channels are the same. The composition of the beverages varies, as

Page 13 of 34

the consumer would expect milk to comprise a substantial part of the opponent’s goods, but not necessarily those of the applicant’s, which contain cereals and/or chocolate. The goods will, however, be in competition with each other. I find that they have a high degree of similarity.

Average consumer and the purchasing process

35. In Hearst Holdings Inc & Anor v A.V.E.L.A. Inc & Ors [2014] EWHC 439 (Ch), Birss J (as he then was) described the average consumer in these terms:

“The trade mark questions have to be approached from the point of view of the presumed expectations of the average consumer who is reasonably well informed and reasonably circumspect. The parties were agreed that the relevant person is a legal construct and that the test is to be applied objectively by the court from the point of view of that constructed person. The word ‘average’ denotes that the person is typical. The term ‘average’ does not denote some form of numerical mean, mode or median.”5

36. Mr Tritton submitted that in the case of the Class 29 goods, the average consumer would be paying “a normal level of attention”, as these goods are everyday foodstuffs and beverages. He accepted that the degree of attention would be slightly higher for the Class 5 goods, but added that this would not be very high, as the goods at issue are not prescription medicines or other pharmaceutical products. For the applicant, Mr Webster submitted that the average consumer was the general public and professionals with specialist knowledge.

37. I shall consider the Class 29 goods first. I agree that the average consumer is a member of the general public. The goods are foodstuffs and beverages that are inexpensive and purchased regularly on a weekly, or even more frequent, basis. They are bought from supermarkets or convenience stores, either physically or online. This means that the average consumer will see the mark when they are selecting the goods,

5 Paragraph 60.

Page 14 of 34

and so will pay the most attention to the visual aspect of that mark. This level of attention will, in my view, be no more than medium.

38. The Class 5 goods are more specialist and will be bought less often. They are nutritional supplements or foodstuffs and beverages that have been modified to meet special dietary requirements. They will be bought from supermarkets, pharmacies and health food shops, as well as specialist suppliers, both physically and online. Again, the consumer will see the mark when buying the goods. However, I consider that word- of-mouth recommendations, or discussions with sales staff, will be more likely with respect to these goods than with the Class 29 goods. Consequently, I do not discount the role the aural aspects of the mark play in the selection process, although the role of the visual appearance of the mark will be greater than that of its sound. I agree with the applicant that the average consumer for these goods would be a member of the general public or a professional customer, for example a business running a care home. Because the goods will be bought with particular needs in mind, the average consumer will, in my view, be paying a slightly higher than medium level of attention.

Comparison of marks

39. It is clear from SABEL (particularly paragraph 23) that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details. The same case also explains that the visual, aural and conceptual similarities of the marks must be assessed by reference to the overall impressions created by the marks, bearing in mind their distinctive and dominant components. The CJEU stated in Bimbo that:

“… it is necessary to ascertain in each individual case, the overall impression made on the target public by the sign for which the registration is sought, by means of, inter alia, an analysis of the components of a sign and of their relative weight in the perception of the target public, and then, in the light of that overall impression and all factors relevant to the circumstances of the case, to assess the likelihood of confusion.”6

6 Paragraph 34.

Page 15 of 34

40. It would be wrong, therefore, artificially to dissect the marks, although it is necessary to take into account their distinctive and dominant components and to give due weight to any other features which are not negligible and therefore contribute to the overall impressions created by the marks.

41. The respective marks are shown below:

Earlier mark Contested mark

42. The earlier mark consists of the words “a2” and “Milk” presented in a slightly stylised script in purple. The words are arranged over two lines, with “a2” appearing slightly larger. For goods that are milk products or milk substitutes, “a2” plays by far the larger role in the overall impression, as the word “milk” is descriptive. The colour purple is, however, not negligible, but the stylisation is limited and will make only a limited contribution to the overall impression of the mark.

43. For the remaining goods, the “a2” will still play the larger role in the overall impression of the mark on account of its size and position, with the other elements of the mark making smaller contributions.

44. The opponent submits that the contested mark will be viewed as “A2”. The applicant disagrees. Ms Fox and Mr Webster submitted in their skeleton that:

“In the present case, the Applicant’s Mark is a purely figurative mark. The only clearly discernible verbal element in the Applicant’s Mark is the numeral ‘2’ in white text. The opaque black element within which the numeral ‘2’ appears may be perceived by consumers in a variety of different ways. It may be seen as representing the shape of a bridge, the body and legs of a person, an open ladder, or a sideways view of a picnic table to name just a

Page 16 of 34

few examples. The figurative elements within the Applicant’s Mark are significant since they dominate the overall visual impression created by the mark, and the range of competing interpretations of those figurative elements is likely to lead to the average consumer identifying the Applicant’s Mark in speech as simply ‘2’.”7

45. It may be possible that the average consumer would see the black shape in one of the ways submitted by the applicant. However, I consider it more likely that they will see the shape as a letter “A” with the normally triangular hole replaced by the digit “2”. Even if I am wrong in this, I take the view that a significant proportion of the public will perceive the mark in the way I have just described. For these consumers, the overall impression of the contested mark lies in the device as a whole, with both parts making a roughly equal contribution. There may also be some consumers for whom the contrast between the black shape and the white digit serves to emphasise the “2”. For them, “2” will make the larger contribution to the overall impression of the mark, with the role played by the black shape a little smaller.

Visual comparison

46. The marks differ in colour, although I note that the registration of a mark in black and white covers its use in colour: see Specsavers International Healthcare Limited & Ors v Asda Stores Limited, [2014] EWCA Civ 1294, paragraph 5, and J W Spear & Sons Ltd v Zynga, Inc., [2015] EWCA Civ 290, paragraph 47. Consumers who see the contested mark as including the letter “A” will identify it as a capital letter, while it appears in lower case in the earlier mark, which also includes the word “milk”. The digit “2” is present in both. Mr Webster submitted that there are also differences in the fonts used, with the contested mark appearing more “blocky” and the earlier mark “wavier”. Overall, I find that the marks have a low degree of visual similarity.

7 Paragraph 21.

Page 17 of 34

Aural comparison

47. The earlier mark will be pronounced as “AY-TOO MILK”, although in the context of milk products the second word may not be spoken. Mr Webster submitted that the contested mark would be pronounced “TOO”, as the digit is “the only clearly discernible verbal element”, but that those who saw the letter A might say “AY-TOO” or, which in his view was more likely, “TOO-AY”. In my view, it was likely that a significant proportion of the public would see the black shape as an “A”. I have nothing to guide me on whether they would then say “AY-TOO” or “TOO-AY”. In the case of the former, the marks are aurally identical if “MILK” in the first mark is not articulated; if it is, they are aurally highly similar. In the case of the latter, they are aurally similar to no more than a medium degree if “MILK” is not articulated, and to a low degree, if it is.

Conceptual comparison

48. Mr Webster submitted that the earlier mark would be understood as referring to a milk protein. However, as both parties agree that the contested mark has no meaning, there is no conceptual comparison to be made.

Distinctiveness of the earlier mark

49. In Lloyd Schuhfabrik Meyer, the CJEU stated that:

“22. In determining the distinctive character of a mark and, accordingly, in assessing whether it is highly distinctive, the national court must make an overall assessment of the greater or lesser capacity of the mark to identify the goods or services for which it has been registered as coming from a particular undertaking, and thus to distinguish those goods or services from those of other undertakings (see, to that effect, judgment of 4 May 1999 in Joined Cases C-108/97 and C-109/97 Windsurfing Chiemsee v Huber and Alternberger [1999] ECR I-0000, paragraph 49).

23. In making that assessment, account should be taken, in particular, of the inherent characteristics of the mark, including the fact that it does or

Page 18 of 34

does not contain an element descriptive of the goods or services for which it has been registered, the market share held by the mark, how intensive, geographically widespread and long-standing use of the mark has been; the amount invested by the undertaking in promoting the mark, the proportion of the relevant section of the public which, because of the mark, identifies the goods or services as originating from a particular undertaking, and statements from chambers of commerce and industry or other trade and professional associations (see Windsurfing Chiemsee, paragraph 51).”

Inherent distinctiveness

50. Registered trade marks possess varying degrees of inherent distinctive character from the very low, because they are suggestive of, or allude to, a characteristic of the goods or services, to those with high inherent distinctive character, such as invented words which have no allusive qualities.

51. In its skeleton and at the hearing, the applicant submitted that the term “a2” is descriptive in the context of milk and dairy products, that a substantial number of the opponent’s applications to register marks containing that term had been refused by several intellectual property offices, and that the opponent’s position was not consistent with the guidance of the CJEU in DOUBLEMINT, Case C-191/01:

“In order for OHIM to refuse to register a trade mark under Article 7(1)(c) of Regulation No 40/94, it is not necessary that the signs and indications composing the mark that are referred to in that article actually be in use at the time of the application for registration in a way that is descriptive of goods or services such as those in relation to which the application is filed, or of characteristics of those goods or services. It is sufficient, as the wording of that provision itself indicates, that such signs and indications could be used for such purposes. A sign must therefore be refused registration under that provision if at least one of its possible meanings designates a characteristic of the goods or services.”8

8 Paragraph 32.

Page 19 of 34

52. Mr Tritton submitted that this case law was irrelevant in the present proceedings. I agree. It is not open to me to decide whether the opponent’s marks should, or should not, have been refused registration. As the CJEU held in Formula One Licensing BV v OHIM, Case C-196/11 P, a registered trade mark must be assumed to have at least some distinctive character.9 The question I must decide is how much.

53. A large volume of evidence was submitted going to the issue of whether A2 is descriptive of a variant beta-casein protein in milk or a type of milk. Ms de Blic-Hamon for the applicant stated that:

“The word element ‘a2’ of the Earlier Marks is purely descriptive of a certain type of milk, commonly known and referred to as ‘A2 milk’ or ‘a2 milk’.”10

54. Exhibits IBH1-IBH6 consist of scientific articles from publications such as the European Journal of Clinical Nutrition and Nutrition Journal. Half of these contain the phrase “A2 milk”.

55. In Rewe Zentral AG v OHIM (LITE), Case T-79/00, the General Court (GC) said:

“The distinctiveness of a mark must be assessed, first, in relation to the goods or services for which registration of the sign has been requested (see Case T-345/99 Harbinger v OHIM (TRUSTEDLINK) [2000] ECR II-3525, paragraph 32) and, second, in relation to the perception of the section of the public targeted, which is composed of consumers of those goods and services.”11

56. The goods in question (Food for infants; powdered milk for babies; dietetic beverages adapted for medical use in Class 5; and Milk powder; milk; butter; cheese; yoghurt; milk beverages, milk predominating, in Class 29) are, as I have found, purchased by the general public who are highly unlikely to find the material in Exhibits

9 Paragraphs 41-44. 10 Witness statement of Isabelle de Blic-Hamon, paragraph 3. 11 Paragraph 27.

Page 20 of 34

IBH1-IBH6 accessible. The use of the phrase “a2 Milk” in those articles does not help me decide how distinctive the a2 Milk mark is in the eyes of the targeted public.

57. Exhibit IBH7 is a factsheet entitled “What is A2 Milk?” produced by the Nestlé Nutrition Institute. It includes colour, charts and pictures, suggesting a wider audience than the nutrition scientists who would have read the articles in Exhibits IBH1-IBH6. Ms de Blic-Hamon states that it was published in 2019. It is unclear whether this was done before or after the relevant date (10 April 2019) or where it was made available. Further undated factsheets from Dairy Australia and The Origin Milk Company can be found in Exhibits IB9 and IB10 respectively.

58. The Macquarie Dictionary, an Australian publication, defines A2 milk as:

“milk which contains only A2 beta-casein proteins, thought to be less allergenic than milk which contains A1 proteins.”12

The entry is undated, although it bears a copyright date of 2019. Ms Massasso in her reply evidence states that the reliability of the Macquarie Dictionary has been put into question by the courts, for example the Federal Court of Australia in Moroccanoil Israel Ltd v Aldi Foods Pty Ltd [2017] FCA 823.13 Even if no doubts had been raised about the source, I do not consider that an Australian dictionary has much weight when I am considering what a consumer in the UK would understand by a term.

59. Exhibits IBH12-IBH15 are adduced to show that “A2” and “a2” have been used descriptively on the market. A Mintel report gives details of products available in Germany, UK, Spain, the Netherlands, Austria, Slovakia and Italy. Of the UK products, eight entries show milk from a2MC. The rest are as follows:

• Brown Cow Organics River Cottage Rich, Organic, Live Yoghurt with Raspberry on the Bottom (“made from the un-homogenised A2 beta casein protein rich

12 Exhibit IBH8. 13 Exhibit SM-3.

Page 21 of 34

milk of the happy grass fed Guernsey cows at Brown Cow Organics”, July 2019);14 • Brown Cow Organics Beetroot Organic Live Yoghurt (“made with A2 beta casein protein whole milk from Guernsey cows”, July 2019);15 and • Brown Cow Organics Carrot & Turmeric Organic Live Yoghurt (“made with A2 beta casein protein wholemilk from Guernsey cows”, March 2018).16

60. Extracts from the Brown Cow Organics and the Abel & Cole websites are presented in Exhibits IBH16 and IBH17. The former refers to A2 beta casein protein, while the latter states that “Guernsey cows have the highest count of A2 milk of all dairy cows”.17 Both extracts are undated.

61. Ms de Blic-Hamon states that the EU Intellectual Property Office (EUIPO) has recognised the descriptive nature and lack of distinctiveness of “a2” and “A2” and supplies the decisions.18 Exhibits IBH17 and IBH18 contain decisions from the Benelux and Australian intellectual property offices. Decisions from other intellectual property offices are not binding on this tribunal. The evidence may have been different and, as Mr Tritton submitted, in the case of the Australian decision the applicable law would not have been the same.

62. At the hearing, Mr Webster took me through Ms Massasso’s first witness statement and exhibits, aiming to show me instances where the opponent itself had used the term “A2” descriptively. An example is the banner advertisement below, used on the Ocado website in July 2018:19

14 Exhibit IBH12, page 3. 15 Ibid., page 4. 16 Ibid, page 12. 17 Exhibit IBH14, page 1. 18 Exhibit IBH16. 19 Exhibit 15, page 111.

Page 22 of 34

63. He also referred to a factsheet produced by the opponent which contains the following:20

64. These are just two examples Mr Webster brought to my attention. Mr Tritton responded by submitting that the phrase “a2 Milk” was used to denote commercial origin, as shown by the letters “TM” in superscript.

65. Taking the evidence as a whole, there is very little to show that at the relevant date the average UK consumer might understand the term “A2” to be associated with milk in a descriptive sense. I make this finding without needing to draw on the results of the informal survey, to which I attach little weight for several reasons, including its small sample size and method of selecting respondents. Even if I accept that some consumers would know that “A2” could describe a beta-casein protein in milk, it is my view that there is a significant proportion of consumers who would not be aware of this information.

66. Mr Tritton referred me to the decision of Mann J in SoulCycle Inc v Matalan Ltd (SOULUXE), [2017] EWHC 496 (Ch), where the judge approved the approach of the Hearing Officer at first instance in considering the reactions of average consumers

20 Exhibit IBH11, page 1.

Page 23 of 34 who did, and did not, recognise the word “SOUL” within the mark “SOULUXE”. He held that there was no “single meaning rule” in trade mark law.

67. For those consumers who do not know this meaning of “A2”, the inherent distinctiveness of the earlier mark is at a medium level. For those who do, it is the stylisation of the mark that gives it its inherent distinctiveness. I find that for this group of consumers the inherent distinctiveness of the mark is low.

Whether the inherent distinctiveness has been enhanced through use

68. Mr Tritton also submitted that the distinctiveness of the earlier mark had been enhanced through use as a brand of the opponent for milk. Ms Fox submitted that the opponent had not pleaded enhanced distinctiveness, and the hearing was too late a stage of the proceedings to raise such a point. She added that the applicant did not accept that the evidence shows enhanced distinctiveness.

69. Even if the opponent had pleaded enhanced distinctiveness earlier in the proceedings, I agree with Ms Fox that the evidence falls short of showing this, and I shall briefly explain why.

70. In her first witness statement, Ms Massasso stated that the opponent launched its fresh milk products in the UK in 2012.21 I note here that the evidence shows no use of the mark on any goods other than milk. The UK subsidiary achieved turnover figures of £8.027 million in the year ending 30 June 2017 and £10.078 million the following year.22

71. I have no figures on the market for milk in the UK, but it is likely to be very large. The level of sales achieved before the years quoted above is not clear. Neither does the opponent provide any figures for the amounts spent on advertising its milk in the UK, although the following examples of advertising material are found in Exhibits 9 to 15 of Ms Massasso’s first witness statement. These fall within three periods:

21 Paragraph 23. 22 Exhibit 2.

Page 24 of 34

• from 2012 and 2013, featuring TV personality Dannii Minogue. The evidence shows that a TV advert was made; that Ms Minogue was interviewed on the Lorraine TV show on 8 December 2012, where she discussed the benefits of drinking the opponent’s milk; and that she posted the same information on Tumblr;23 • The “Welcome Back to Milk” campaign in 2015, featuring rugby player Danny Cipriani and TV advertising;24 and • The “a2tonishing” campaign from 2016 to 2018. Promotional material included supermarket banners and advertising and features in publications such as Healthy Food Guide Magazine (reach: 106,445), Ocado Magazine (circulation: 250k) and Woman’s Health (reach: 500k).25

72. a2MC has been nominated for, and won, several awards between 2015 and 2019. These are shown in Exhibit 18 and include Sainsbury’s Magazine Food & Drink Awards 2017 (runner-up), Healthy Food & Drink Awards 2018 (Winner, Best Free From) and The Grocer Gold Awards 2019 (Green Initiative of the Year, Finalist).

73. The picture from the earlier years is therefore patchy. I have no information on how many people in the UK are likely to have seen the interview or adverts featuring Ms Minogue or read her post on Tumblr or seen the campaign in 2015. The sales figures quoted above with the promotional material from 2017 and 2018 start to look promising for the opponent, but these relate to 2 years, and were followed by the announcement that the opponent would no longer be selling milk in the UK. Mr Tritton drew my attention to the description of the opponent as a “mainstream dairy brand” in an article from The Guardian on 26 September 2018 (“a2 Milk becomes first mainstream dairy brand to ditch plastic bottles”). However, in the same article a representative from the Forest Stewardship Council UK is quoted as saying:

“It is hugely impressive that a relatively small brand in the dairy industry should be the first to make the switch from plastic bottles to paper-based

23 Exhibits 9-11. 24 Exhibits 12-14. 25 Exhibit 15.

Page 25 of 34

cartons. If all milk in plastic bottles used in the UK were changed to cartons we could significantly cut plastic use.”26

74. Considering the evidence before me, I agree with Ms Fox that it does not show that the distinctiveness of the earlier mark has been enhanced through use. While there is evidence of use of the mark during a seven-year period in the UK, there are significant gaps in that evidence. Even for the years where there are sales figures, it seems to me that a2MC had a fairly small share of the market for milk. The term used in the specification is “milk”, not a specialist milk product.

Conclusions on likelihood of confusion

75. There is no scientific formula to apply in determining whether there is a likelihood of confusion. It is a global assessment where a number of factors need to be borne in mind. The first is the interdependency principle, i.e. a lesser degree of similarity between the respective trade marks may be offset by a greater degree of similarity between the respective goods or vice versa. It is necessary for me to take account of the distinctive character of the opponent’s marks, the average consumer and the nature of the purchasing process for the contested goods. In doing so, I must be aware that the average consumer rarely has the opportunity to make direct comparisons between trade marks and must instead rely upon the imperfect picture of them they have in their mind.

76. Earlier in my decision, I found that the applicant’s goods were identical or similar to the opponent’s goods and for convenience I have summarised these findings in the table below:

Identical goods Class 5: Dietetic beverages for medical and clinical use; Food and food substances for babies; Food preparations for infants; Powdered milk for babies; Dietetic substances for medical and clinical use; Lacteal flour for infants.

26 Page 138.

Page 26 of 34

Class 29: Milk; Powdered milk; Milk beverages, milk predominating; Dairy products; Milk-based beverages and preparations. Similar to a high degree Class 5: Dietetic foodstuffs and substances for medical and clinical use; Foodstuffs and food substances for medical use for children and patients. Class 29: Milk substitutes; Soy milk; Milk-based beverages containing cereals and/or chocolate. Similar to a medium Class 5: Foodstuffs and food substances for medical degree use in nursing mothers; Nutritional supplements for medical use for pregnant women and breastfeeding mothers; Dietetic supplements for medical use; Nutritional and dietetic supplements for medical use. Similar to a low degree Class 5: Nutritional supplements; Nutritional and food supplements; Vitamin preparations; Mineral-based preparations; Dietary fibers; Vitamin preparations and substances.

77. I also found that:

• The average consumer of the Class 29 goods would be a member of the general public who would be paying no more than a medium level of attention; • The average consumer of the Class 5 goods would be a member of the general public or a professional paying a slightly higher than medium level of attention; • The marks have a low degree of visual similarity; • The marks have a low or high degree of aural similarity, depending on whether the word “MILK” is articulated in the earlier mark; • For consumers who know that “A2” can be used to refer to a type of milk protein, the earlier mark will have a low degree of distinctiveness; and • For consumers who do not have this knowledge, which will be significant proportion of the public, the earlier mark will have a medium degree of distinctiveness.

Page 27 of 34

78. In Comic Enterprises Ltd v Twentieth Century Fox Film Corporation [2016] EWCA Civ 41, Kitchin LJ held that a court may properly find infringement if it concludes that “a significant proportion of the relevant public is likely to be confused such as to warrant the intervention of the court”.27 I found that a significant proportion of the relevant public would not know that “A2” can be used to refer to a type of milk protein, and that for them the earlier mark would have a medium degree of inherent distinctiveness.

79. There are two types of confusion: direct and indirect. In L.A. Sugar Limited v Back Beat Inc, BL O/375/10, Mr Iain Purvis QC, sitting as the Appointed Person, explained that:

“Although direct confusion and indirect confusion both involve mistakes on the part of the consumer, it is important to remember that these mistakes are very different in nature. Direct confusion involves no process of reasoning – it is a simple matter of mistaking one mark for another. Indirect confusion, on the other hand, only arises where the consumer has actually recognised that the later mark is different from the earlier mark. It therefore requires a mental process of some kind on the part of the consumer when he or she sees the later mark, which may be conscious or subconscious but analysed in formal terms, is something along the following lines: ‘The later mark is different from the earlier mark, but also has something in common with it. Taking account of the common element in the context of the later mark as a whole, I conclude that it is another brand of the owner of the earlier mark.’”28

80. I found the marks to be visually similar to a low degree, and that it would be the visual element of the mark that was most important during the purchasing process. Where the goods are identical or highly similar, it is my view that the average consumer would mistake one mark for another, as they recollect them only imperfectly. However, where those goods are similar to a medium or lower degree, the differences in visual appearance will be sufficient for direct confusion not to be likely.

27 Paragraph 34. 28 Paragraph 16.

Page 28 of 34

81. Indirect confusion requires the average consumer to recognise that the marks are different, but to assume that they come from the same undertaking or an economically connected one. The differences in presentation are so marked, with the earlier mark having a slightly stylised script, and the contested mark with the figure “2” on a dark background that a significant proportion of consumers will identify as an “A”, that it would involve a very large mental leap for the average consumer to make the assumption that the undertakings are the same or connected. I find that there is no likelihood of indirect confusion.

82. The opposition based on the a2 Milk mark has been successful with respect to the following goods:

Class 5 Dietetic foodstuffs, beverages and substances for medical and clinical use; Food and food substances for babies; Food preparations for infants; Lacteal flour for babies; Powdered milk for babies; Foodstuffs and food substances for medical use for children and patients.

Opposition based on EUTM No. 017471641, EUTM No. 017819608, UKTM 3159096

83. As the opposition has not been entirely successful on the basis of the a2 Milk mark, I shall now consider the remaining marks.

Comparison of goods

84. The goods to be compared are shown in the table below. I have confined myself to the Class 5 goods where I found a medium or lower degree of similarity and where the opposition based on the a2 Milk mark was not successful. The terms I found identical or highly similar to the applicant’s goods are also included in the three

Page 29 of 34 specifications I am now considering, so I adopt the analysis I have already carried out in paragraphs 22-25 and 30-34.

Earlier Goods Contested Goods EUTM No. 017471641 Class 5 Foodstuffs and food substances for Class 5 medical use for nursing mothers; Food for infants; milk and powdered milk for nutritional supplements for medical infants; dietetic foods adapted for medical use; nutritional and dietetic purposes; dietetic beverages adapted for supplements for medical use; medical purposes; nutritional supplements; vitamin preparations, mineral- protein dietary supplements; powdered based preparations; dietary fibers; nutritional supplement drink mixes; dietary vitamin preparations and supplemental drinks; protein powder; protein substances; nutritional and food powder for use as a food additive. supplements.

EUTM No. 017819608

Class 5 Food for infants; milk and powdered milk for infants; dietetic foods adapted for medical purposes; dietetic beverages adapted for medical purposes; nutritional supplements; powdered nutritional supplement drink mixes; dietary supplementary drinks; protein dietary supplements; protein powder; protein powder for use as a food additive.

UKTM No. 3159096

Class 5 Food for infants; milk and powdered milk for infants; dietetic food and beverages.

Page 30 of 34

85. The applicant’s Foodstuffs and food substances for medical use for nursing mothers are foodstuffs intended to provide optimal nutrition for mothers who are breastfeeding their babies and, by extension, the babies themselves. They are included in the broader category of Dietetic food adapted for medical purposes (EUTM No. 017471641 and EUTM No. 017819608) and Dietetic food and beverages (UKTM No. 31590906).

86. Nutritional supplements for medical use; nutritional and dietetic supplements for medical use; vitamin preparations, mineral-based preparations; dietary fibers; vitamin preparations and substances; nutritional and food supplements are identical to, or included in the broader category of Nutritional supplements (EUTM No. 017471641 and EUTM No. 017819608). The nearest term in the specification for UKTM No. 31590906 is Dietetic food and beverages. I adopt the analysis in paragraph 28.

Average consumer and the purchasing process

87. I adopt the analysis in paragraph 38 above.

Comparison of marks

88. The marks to be compared are as follows:

Earlier marks Contested mark EUTM No. 017471641

a2 Only

EUTM No. 017819608

a2 True

Page 31 of 34

Earlier marks Contested mark UKTM No. 3159096

DO YOU a2?

89. I have already considered the overall impression of the contested mark in paragraphs 44-45 above, and I adopt that analysis. The earlier EUTMs consist of “a2” followed by the word “Only” or “True”. In both of the marks, “a2” makes the largest contribution to the overall impression, with “only” and “true” playing a minor role, as they allude to a quality of purity to be found in the goods sold under the marks. The UKTM consists of three words which hang together to form a question, although not one that makes sense in standard English. The term “a2” appears at the end of this mark. In my view, it is in the question that the overall impression of this mark lies.

90. As with the a2 Milk mark, I find that these earlier marks are visually similar to the contested mark to a low degree. To my mind, the additional words – “only”, “true” and “do you” will be spoken and so the marks are aurally similar to a low degree, where the contested mark would be spoken as “AY-TOO”, and a very low degree, where it would be spoken as “TOO-AY”. Conceptually there is no comparison to make.

Distinctiveness of the earlier marks

91. Mr Tritton accepted that no use had been shown of these earlier marks, and so there is only their inherent distinctiveness to consider. For those consumers who have some knowledge of A2 as a protein type in milk, the marks may be weakly suggestive of that protein and so the inherent distinctiveness of the marks would be slightly less than medium. For those consumers who do not know about the milk protein, the marks would have a medium level of inherent distinctiveness.

Conclusions on the likelihood of confusion

92. When considering my global assessment of the likelihood of confusion, I find that the interdependency principle has a significant role to play. I also recall that in Comic

Page 32 of 34

Enterprises the court held that it was sufficient for a significant proportion of the public to be likely to be confused such as to warrant intervention. It is my view that where the goods are identical, a significant proportion of the public (those who do not have any knowledge of A2 as a milk protein) is likely to be directly confused, particularly given the minor contribution made to the overall impressions of the marks by “only” and “true” and the average consumer’s imperfect recollection.

93. The opposition relying on the EUTMs succeeds for the following goods: Foodstuffs and food substances for medical use for nursing mothers; nutritional supplements for medical use; nutritional and dietetic supplements for medical use; vitamin preparations, mineral-based preparations; dietary fibers; vitamin preparations and substances; nutritional and food supplements.

94. I also find that there would be a likelihood of confusion between the contested mark and the UKTM in respect of Foodstuffs and food substances for medical use for nursing mothers, given the identity of the goods. However, the remaining goods are, in my view, not similar enough to overcome the low level of visual similarity between the contested mark and the UKTM.

Outcome

95. The opposition has been successful and the application is refused.

Costs

96. The opponent has been successful and is entitled to a contribution towards its costs in line with the scale set out in Tribunal Practice Notice (TPN) 2/2016. In the circumstances, I award the applicant the sum of £2300 as a contribution towards the cost of the proceedings. The sum is calculated as follows:

Preparing a statement and considering the other side’s statement: £200 Preparing evidence and considering the other side’s evidence: £1000 Preparing for and attending the hearing: £1000 Official fee: £100

Page 33 of 34

TOTAL: £2300

97. I therefore order Société des Produits Nestlé SA to pay The a2 Milk Company Limited the sum of £2300, which should be paid within twenty-one days of the expiry of the appeal period or, if there is an appeal, within twenty-one days of the conclusion of the appeal proceedings.

Dated this 16th day of April 2021

Clare Boucher For the Registrar, Comptroller-General

Page 34 of 34