The hugely popular ‘Mother’ energy drink will remain the only beverage on shelves with the moniker after its owner, Energy Beverages (EB), successfully appealed a decision of a delegate with the Registrar of Trademarks in the Federal Court of Australia.

Delegate Robert Wilson had granted Kangaroo Mother Australia’s (KMA) registration of ‘KANGAROO MOTHER’ on its energy drinks, having found the two trademarks were not “deceptively similar”.

Mr Wilson also found EB had “failed to establish any grounds of opposition it contended for”.

However, Justice David O’Callaghan agreed with EB that the marks were similar and would likely “deceive or cause confusion”.

EB had submitted that a reasonably minded Australian consumer “with an imperfect recollection of EB’s trademarks and no opportunity to compare the marks side by side”, was likely to be caused to “wonder, perplexed or mixed up” about the source of both products.

In response, KMA submitted the marks do not convey the same idea or impression and that the word ‘kangaroo’ would have changed the meaning or the distinction of the word ‘mother’.

“There remains a real chance that consumers will have cause to wonder whether the addition of the word KANGAROO to the otherwise distinctive MOTHER mark is used to signify some form of MOTHER brand extension or related product variant,” EB submitted.

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Justice O’Callaghan agreed with EB’s concerns.

“It seems to me that adding the word kangaroo does not give the ‘KANGAROO MOTHER’ mark an immediate and obvious meaning that avoids any prospect of confusion,” Justice O’Callaghan found.