Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808

Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808

The Court found the respondents' cross claim for full rectification failed under s 41 but succeeded under ss 59 and 92(4) to the extent of removing from the register those goods for which the applicants lacked intention to use, specifically excising the general foodstuffs category from the relevant marks. The marks otherwise survived rectification as the applicants established intention to use and actual use for bread and related products. The respondents' use of 'La Famiglia Rana' was held to be deceptively similar to the applicants' marks and used on goods of the same description (filled pasta), establishing infringement under s 120(2). The respondents' argument for a statutory defence...

Parties
Applicant / First Cross Respondent: Goodman Fielder Pte Ltd; Second Applicant / Second Cross Respondent: La Famiglia Fine Foods Pty Ltd; First Respondent / First Cross Claimant: Conga Foods Pty Ltd; Second Respondent / Second Cross Claimant: Pastificio Rana SPA
Jurisdiction
Australia
Judgment Date
17 December 2020
Procedural Posture
Trade Mark Rectification and Infringement Proceedings / Final Judgment on Liability and Rectification
Outcome
Partial rectification of the register to narrow the goods for which the trade marks are registered; trade mark infringement established; directions for draft orders and further hearing on consequential matters.
Legal Topics
Trade Marks, Rectification of Register, Infringement, Non Use, Distinctiveness, Discretion in Rectification
Intellectual Property Trade Marks Rectification of Register Infringement Non Use Distinctiveness Discretion in Rectification

Case Brief

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Parties

Goodman Fielder Pte Ltd

Applicant / First Cross Respondent

La Famiglia Fine Foods Pty Ltd

Second Applicant / Second Cross Respondent

Conga Foods Pty Ltd

First Respondent / First Cross Claimant

Pastificio Rana SPA

Second Respondent / Second Cross Claimant

Procedural Posture

Trade Mark Rectification and Infringement Proceedings / Final Judgment on Liability and Rectification

Legal Issues

  1. 1 Whether respondents are entitled to rectification of the register of trade marks under Trade Marks Act 1995 (Cth) ss 59, 92(4), for lack of intention to use or non-use
  2. 2 Whether applicants' trade marks lack capacity to distinguish under s 41
  3. 3 Whether respondents' use of 'La Famiglia Rana' infringed the applicants' trade marks under s 120

Ratio Decidendi

The Court found the respondents' cross claim for full rectification failed under s 41 but succeeded under ss 59 and 92(4) to the extent of removing from the register those goods for which the applicants lacked intention to use, specifically excising the general foodstuffs category from the relevant marks. The marks otherwise survived rectification as the applicants established intention to use and actual use for bread and related products. The respondents' use of 'La Famiglia Rana' was held to be deceptively similar to the applicants' marks and used on goods of the same description (filled pasta), establishing infringement under s 120(2). The respondents' argument for a statutory defence...

Court Disposition

Partial rectification of the register to narrow the goods for which the trade marks are registered; trade mark infringement established; directions for draft orders and further hearing on consequential matters.

Orders

  • The parties to confer and provide proposed short minutes of order to chambers by 4.00pm on 1 February 2021 to give effect to the Court's reasons, include any proposed suppression orders or redactions.
  • Proceeding listed for case management hearing at 9.30am on 5 February 2021.