Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8) [2019] FCA 593

Kraft Foods Group Brands LLC v Bega Cheese Limited (No 8) [2019] FCA 593

The goodwill in the Peanut Butter Trade Dress (PBTD) inured to Kraft Foods Limited's Australian peanut butter business and could not be assigned or licensed apart from that business under Australian law. Upon Bega's acquisition of the Australian peanut butter business and associated goodwill from Mondelez Australia (Foods) Ltd (formerly Kraft Foods Limited), Bega lawfully acquired all rights to the PBTD. Kraft's contrary claims based on group licensing and contractual arrangements (including the MTA under New York law) could not overrule the operation of Australian law relevant to the assignment and ownership of goodwill in unregistered marks. Accordingly, Bega is entitled to use the...

Jurisdiction
Australia
Judgment Date
01 May 2019
Procedural Posture
Commercial Intellectual Property Dispute (contracts / Trade Mark / Consumer Law) / Judgment After Liability Trial; Further Hearing to Determine Form of Orders and Declarations
Outcome
Bega owns the rights to the Peanut Butter Trade Dress and is entitled to use it. Bega did not engage in misleading or deceptive conduct or passing off by its use of the PBTD. Bega's use of Kraft-branded shippers after expiry of licence infringed Kraft's registered trade marks but was otherwise not unlawful. Certain...
Legal Topics
['trade Dress / Get Up' 'passing Off' 'assignment of Goodwill' 'unregistered Trade Marks' 'australian Consumer Law (acl) S 18' 'trade Marks Act 1995 (cth) S 120(1)' 'copyright' 'misleading or Deceptive Conduct']
['intellectual Property' 'contract Law' 'consumer Law'] ['trade Dress / Get Up' 'passing Off' 'assignment of Goodwill' 'unregistered Trade Marks' 'australian Consumer Law (acl) S 18' 'trade Marks Act 1995 (cth) S 120(1)' 'copyright' 'misleading or Deceptive Conduct']

Case Brief

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Procedural Posture

Commercial Intellectual Property Dispute (contracts / Trade Mark / Consumer Law) / Judgment After Liability Trial; Further Hearing to Determine Form of Orders and Declarations

Legal Issues

  1. 1 ["Who owns the Peanut Butter Trade Dress (PBTD) used in Australia on peanut butter products after Bega's acquisition?" 'How does goodwill attach and can it be assigned separately from the business?' 'Did Bega or Kraft engage in misleading or deceptive conduct or passing off under the ACL?' "Did Bega infringe Kraft's registered trade marks by its use of 'Kraft' shippers?" 'What contractual rights and obligations arose under the Master Trade Mark Agreement (MTA) and Sale and Purchase Agreement (SPA)?' "Did Kraft infringe Bega's copyright in labels?"]

Ratio Decidendi

The goodwill in the Peanut Butter Trade Dress (PBTD) inured to Kraft Foods Limited's Australian peanut butter business and could not be assigned or licensed apart from that business under Australian law. Upon Bega's acquisition of the Australian peanut butter business and associated goodwill from Mondelez Australia (Foods) Ltd (formerly Kraft Foods Limited), Bega lawfully acquired all rights to the PBTD. Kraft's contrary claims based on group licensing and contractual arrangements (including the MTA under New York law) could not overrule the operation of Australian law relevant to the assignment and ownership of goodwill in unregistered marks. Accordingly, Bega is entitled to use the...

Court Disposition

Bega owns the rights to the Peanut Butter Trade Dress and is entitled to use it. Bega did not engage in misleading or deceptive conduct or passing off by its use of the PBTD. Bega's use of Kraft-branded shippers after expiry of licence infringed Kraft's registered trade marks but was otherwise not unlawful. Certain...

Orders

  • ['Further hearing to be fixed to determine form of orders and declarations in light of the reasons for judgment.']