Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367

Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367

The registered trade mark 'PERSIAN FETTA' was not inherently adapted to distinguish, functioning descriptively to indicate a style and potential geographic origin of cheese, and was a term other honest traders would want to use. Prior to 21 March 2000, Yarra Valley's use was not sufficient to establish acquired distinctiveness; 'PERSIAN FETTA' was not used as a trade mark alone and remained descriptive. The mark should therefore be removed from the Register. Claims for passing off and misleading or deceptive conduct failed, as sufficiently distinctive features distinguished Yarra Valley's and Lemnos' products, and consumers were unlikely to be misled.

Parties
Applicant: The Yarra Valley Dairy Pty Ltd (ACN 067 021 863); First Respondent: Lemnos Foods Pty Ltd (ACN 078 380 855); Second Respondent: Terry Paule
Jurisdiction
Australia
Judgment Date
10 December 2010
Procedural Posture
Federal Court Proceeding—application for Trade Mark Rectification and Related Relief / Judgment at First Instance After Trial
Outcome
Yarra Valley's trade mark registration for PERSIAN FETTA to be cancelled; Yarra Valley's claims for passing off and misleading/deceptive conduct dismissed.
Legal Topics
Trade Marks—distinctiveness—geographic Reference, Rectification of Register—section 88 Trade Marks Act 1995 (cth), Passing Off, Misleading or Deceptive Conduct—trade Practices Act 1974 (cth), Onus of Proof—trade Mark Cancellation, Evidence—hearsay—admissibility Under Evidence Act 1995 (cth)
Intellectual Property Commercial Law Torts Consumer Law Evidence Trade Marks—distinctiveness—geographic Reference Rectification of Register—section 88 Trade Marks Act 1995 (cth) Passing Off +3 more

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Parties

The Yarra Valley Dairy Pty Ltd (ACN 067 021 863)

Applicant

Lemnos Foods Pty Ltd (ACN 078 380 855)

First Respondent

Terry Paule

Second Respondent

Procedural Posture

Federal Court Proceeding—application for Trade Mark Rectification and Related Relief / Judgment at First Instance After Trial

Legal Issues

  1. 1 Whether 'PERSIAN FETTA' trade mark is inherently adapted to distinguish under s 41 Trade Marks Act 1995 (Cth)
  2. 2 Whether trade mark registration should be cancelled under s 88(2)(a), (e) TMA
  3. 3 Whether passing off occurred

Ratio Decidendi

The registered trade mark 'PERSIAN FETTA' was not inherently adapted to distinguish, functioning descriptively to indicate a style and potential geographic origin of cheese, and was a term other honest traders would want to use. Prior to 21 March 2000, Yarra Valley's use was not sufficient to establish acquired distinctiveness; 'PERSIAN FETTA' was not used as a trade mark alone and remained descriptive. The mark should therefore be removed from the Register. Claims for passing off and misleading or deceptive conduct failed, as sufficiently distinctive features distinguished Yarra Valley's and Lemnos' products, and consumers were unlikely to be misled.

Court Disposition

Yarra Valley's trade mark registration for PERSIAN FETTA to be cancelled; Yarra Valley's claims for passing off and misleading/deceptive conduct dismissed.

Orders

  • The parties to confer and submit minutes of orders reflecting the reasons and any agreed orders as to costs by 4:00pm on 17 December 2010.