Fonterra v Vitasoy: Turns out you really can grow milk

By Kimberley Evans
Intellectual Property Patents & Trade Marks

In brief 3 min read

The Registrar's recent decision in Fonterra Co-Operative Group Limited v Vitasoy International Singapore Pte Ltd [2019] ATMO 137 caught our eye here at Allens. 'Vores and Veggies alike were surprised to see Fonterra's opposition to Vitasoy's trade mark application for GROWING MILK SINCE 1940 for a range of beverages in Classes 29, 30 and 32 that can roughly be summarised as 'non-dairy milks'. Ultimately, the Registrar's decision reaffirms an assumption of level-headedness in the average consumer, capable of identifying and embracing the spirit of trade marks containing connotations rather than being misled by them.

The facts – crying over grown milk

Vitasoy's GROWING MILK SINCE 1940 application was accepted for registration and subsequently opposed by Fonterra under sections 42(b) and 43 of the Trade Marks Act 1995. As a quick refresher:

  • s42(b) provides that a trade mark application must be rejected if its use would be contrary to law; and
  • s43 provides that a trade mark must be rejected if, because of some connotation the trade mark contains, its use would be likely to deceive or confuse.

Like the delegate of the Registrar, we'll look at the s43 ground first.

Misleading or deceptive connotation

Fonterra's arguments under s43 focused on the assertion that 'milk' is defined in the Dairy Produce Act 1986 and the Australian and New Zealand Food Standards Code (Food Standards), and by the World Health Organisation, as a product that issues or originates from the mammary glands of animals. Fonterra argued that Vitasoy's products were plant-based, not dairy milk, and by omitting any reference to soy, rice, nuts, or plants in the trade mark, consumers would be led to mistakenly believe that Vitasoy's goods contained dairy, and as a result, the trade mark would be likely to deceive or confuse. Further, Fonterra argued, use of the mark could be dangerous because there are important medical (allergies, etc) and common sense reasons for making consumers aware of the content of the beverages.

'...connotations must be assessed in light of the reasonable expectations of consumers after considering the meaning in the context of the goods provided...'

Vitasoy countered with evidence of an Advertising Standards Board complaint in 2017 concerning a TV commercial featuring the GROWING MILK SINCE 1940 trade mark. The Board dismissed that complaint because it found Vitasoy had complied with the Food Standards, which recognises that the term 'milk' may be used as a food name in connection with the sale and advertisement of plant-based beverages.

The delegate – clearly a man with a familiarity for milk and mylk (the generic term adopted for plant-based milk) – dismissed Fonterra's s43 ground. He said connotations must be assessed in light of the reasonable expectations of consumers after considering the meaning in the context of the goods provided, and that it would be artificial to separate the word MILK from the rest of the trade mark. The inclusion of the word GROWING in the mark makes it clear to the reasonable consumer that the products are not dairy as 'consumers are aware that dairy milk is not grown (it is milked from a cow)'. 

Contrary to law

Fonterra's arguments under s42(b) also relied on the definition of milk as originating from animals in various codes and pieces of legislation. Since Vitasoy's goods were not of animal origin, Fonterra argued that Vitasoy's use of the trade mark would constitute misleading and deceptive conduct in breach of the Australian Consumer Law and also breach the Food Standards.

The delegate determined there could neither be any misleading or deceptive conduct nor breach of the Food Standards since:

  1. Vitasoy's trade mark did not connote that its goods were dairy-based milks; and
  2. the Advertising Standards Board had refused the 2017 complaint. 

Milk v Mylk

It is always interesting to see how the Registrar of Trade Marks views consumers and their level of nouse when confronted with a trade mark that contains a connotation. We 'Vores and Veggies were reassured to know the Registrar considers us capable of accurately choosing between milk and mylk for our morning coffee…and we are considering a trip to Vitasoy's farms to see their milk trees sometime soon.